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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Body Shop International Plc. v. web4COMM SRL Romania

Case No. DRO2009-0006

1. The Parties

The Complainant is The Body Shop International Plc. of United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services AB, Sweden.

The Respondent is web4COMM SRL Romania of Romania.

2. The Domain Names and Registrar

The disputed domain names <thebodyshop.ro> and <the-body-shop.ro> are registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2009. On June 4, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain names. On June 5, 2009, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both domain names and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 8, 2009. As a new potential email address of the Respondent was noted, the Response due date was extended to July 15, 2009. However the Respondent did not submit any response.

The Center appointed Marilena Oprea as the sole panelist in this matter on July 22, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Language of the proceedings

The Registrar of the disputed domain names has informed the Center that the language of the relevant registration agreements is Romanian.

As the Complaint had been submitted in English, on June 9, 2009, the Center forwarded a notice to the Complainant stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings. On June 10, 2009, the Complainant submitted a letter requesting the language of proceedings to be English, providing in the same time supporting arguments for its request.

Although properly notified in both languages on the commencement of the proceedings, the Respondent chose not to participate.

Even though the Complainant did not provide the Romanian version of the Complaint, the Panel does not believe that the Respondent could have had any difficulty in understanding the substantive claims made against it in these proceedings mainly because:

- the Center sent all the communications in both languages, Romanian and English. Further, the Center specifically advised the Respondent to file its response in either language, informing the Respondent with regard to the appointment of a Panel familiar with both languages, if available;

- the Respondent has been involved as a respondent in several administrative proceedings before WIPO UDRP panels, all conducted in English (see e.g., SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO Case No. DRO2008-0013; and OSRAM GmbH v. WEB4COMMSRL Romania, WIPO Case No. DRO2005-0004);

For all the above, the Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English.

4. Factual Background

The Complainant is a well-known global manufacturer and retailer of natural beauty and cosmetics products established under the laws of United Kingdom since 1976.

The Complainant is the owner of numerous trademark registrations for said THE BODY SHOP trademark in block letter and logo formats covering various goods and services in countries throughout the world, a listing of the same being provided as Annex 5 of the Complaint. In Romania the Complainant has registered several trademarks consisting of or including the words "The Body Shop", such as:

- THE BODY SHOP logo International Registration No. 841798 of 24.08.2004 registered for the classes 3, 21, 35; and

- THE BODY SHOP word mark CTM 001980416 /1999 for the classes 3, 21, 42.

The Respondent is a Romanian company, web4COMM S.R.L. Romania which is the current registrant of the disputed domain names.

Both disputed domain names were registered on December 6, 2000.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

- the domain names <thebodyshop.ro> and <the-body-shop.ro> are identical or confusingly similar to its mark THE BODY SHOP;

- the trademark THE BODY SHOP is well-known in Romania and worldwide;

- due to its reputation, there is a risk that the trade public to believe that the disputed domain names belong to the Complainant or that there is a commercial relation between the two parties. The trademark also risks being tarnished by being connected to a website;

- by using the trademark as domain names, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark;

- the Respondent has no registered trademarks, nor trade names corresponding to the disputed domain names, nor did it use the words "The Body Shop" in a way that would give it any legitimate rights in the names;

- the Respondent has no license or authorization from the Complainant to use the trademark THE BODY SHOP;

- since their registration on December 6, 2000, the disputed domain names don't seem to be actively used;

- the disputed domain names were registered in bad faith because these were registered after the registration of Complainant's trademark and the Respondent should have been aware of the well-known trademark THE BODY SHOP;

- it has notified the Respondent of its rights and did not get any reaction back from it;

- the Respondent registered the disputed domain names concealing its identity;

- the Respondent has been involved in seven WIPO UDRP cases, all related to domain names identical or confusingly similar to famous trademarks and decided in the favor of the complainants. Thus the Respondent has engaged in a pattern of such conduct;

- the Respondent has registered the domain names in order to prevent the Complainant from reflecting its trademark THE BODY SHOP in a corresponding domain name and the purpose of this was probably to obtain financial benefits by selling or otherwise transferring the disputed domain names to the Complainant or its competitors.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain names:

(A) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(B) the Respondent has no rights or legitimate interests in respect of the domain names; and

(C) the domain names have been registered and are being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under this paragraph, namely: that it has rights in a trademark or service mark, and that the domain name is identical or confusingly similar to the mark.

Having conducted a search on the publicly available register,¹ the Panel notes that (i) the national mark registration no. 018268/1991 for the word mark THE BODY SHOP listed in the Complaint seems to have elapsed in 2001, as well as the mark with device THE BODY SHOP registration no. 018269/1991; and (ii) the Complainant holds a valid national registration for the mark with device THE BODY SHOP no. 021515/1993 which was renewed until 2013.

The Complainant holds the CTM registration for 001980416 /1999; however, the CTMs are valid in Romania since January 1, 2007. Further, Complainant holds an International Registration for the mark THE BODY SHOP with device element reg. no. 841798 /2004.

As Complainant held and currently holds several trademark registrations for or including the words "The Body Shop", the Panel concludes that the Complainant holds rights in THE BODY SHOP trademark and the trademark predates the domain names.

Further, the Panel finds that the domain name <thebodyshop.ro> is identical to the Complainant's trademark because it incorporates it in its entirety. Also, the domain name <the-body-shop.ro> is virtually identical to THE BODY SHOP trademark as the mere addition of the two hyphens does not alter such identity. Both disputed domain names can be sensibly understood as the English words "The Body Shop" in combination Further, the top level country code ".ro" in both domain names does not alter such identity, but it connects the said trademark to the Romanian space.

In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has provided a prima facie showing that it has had no relationship with the Respondent and has not granted the Respondent any right to use the trademarks. Thus, the burden of proof on this element shifts to the Respondent; either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or providing other relevant acceptable grounds.

The Respondent failed to submit any response. As prior WIPO UDRP panels have found (see for example, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001), the silence of the Respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain names.

Further more, there is no evidence to suggest that the Respondent has made a bona fide use of the disputed domain names, or been known by this name, or is making any legitimate non-commercial or fair use of the domain names. In fact, it seems that the Respondent has not used the disputed domain names at all.

Lastly, the Respondent was involved in numerous UDRP cases, to be further analyzed under the heading of bad faith below.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain names, and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As concluded under the heading of identical or confusingly similar heading above, the Complainant's trademark registrations predate the registration of the disputed domain names.

As the Complainant's trademark has a worldwide reputation and having into consideration all the other circumstances of the present case, the Panel is of the opinion that the registration of the domain names incorporating the trademark THE BODY SHOP was done with the knowledge of it and with the implied intent to take advantage of this mark.

The passive holding of the disputed domain names by the Respondent for more than 8 years since their registration (See Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055) together with the other circumstances of the present case is, in the opinion of the Panel, clear evidence of bad faith use.

The Respondent provided no evidence of nor alleged any actual or contemplated good faith use.

The Respondent was involved in several prior UDRP procedures, all related to famous marks and decided in the favor of the complainants; therefore the Panel concludes that the conduct of the Respondent perfectly fits the situation described under paragraph 4(b)(ii) of the Policy.

For all these reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith, and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <thebodyshop.ro> and <the-body-shop.ro> be transferred to the Complainant.

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Marilena Oprea
Sole Panelist

Dated: August 5, 2009

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¹ As to the legitimacy of the Panel doing so, see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.