WIPO Arbitration and Mediation Center

ARBITRATION AWARD

The Body Shop International plc. v. Joan uiterlijke verzorging

Case No. WIPO2008NL7

In an arbitration
under the Regulations for Arbitration on
.nl Domain Names
between:

The Body Shop International plc.
West Sussex
United Kingdom of Great Britain and Northern Ireland and The Netherlands

and

Joan uiterlijke verzorging
Joure
The Netherlands

Arbitrator
Tobias Cohen Jehoram

This arbitration award is rendered by me as arbitrator under the Regulations for Arbitration on .nl Domain Names (“the Regulations”) of the Stichting Internet Domeinregistratie Nederland (“SIDN”) , in a dispute between The Body Shop International plc. (the Plaintiff) and Joan uiterlijke verzorging (the Defendant) concerning the domain name <debodyshop.nl>.

1. The Parties

The Plaintiff, The Body Shop International plc., is a public limited company incorporated under the laws of the United Kingdom of Great Britain and Northern Ireland, with registered office in Watersmead, Littlehampton, West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Corporate Brand Services AB, Stockholm, Sweden.

The Defendant, Joan uiterlijke verzorging, is a sole proprietorship under the laws of the Netherlands, with place of business in Joure, The Netherlands. The Defendant did not appoint a representative.

2. The Domain Name(s) and Participant(s)

The domain name in dispute is <debodyshop.nl> (the Domain Name). The participant is VEVIDA Services B.V. with registered office in Groningen, the Netherlands.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) in hardcopy on February 27, 2008 and by e-mail on February 29, 2008. In accordance with article 7 of the Regulations, the Center has verified that the Complaint satisfies the formal requirements of the Regulations.

On March 3, 2008, the Center acknowledged receipt of the Complaint and requested Registry Verification. On March 5, 2008, the Registry (SIDN) confirmed that the Defendant is the current registrant of the Domain Name. Further, the Registry informed the Center that the domain name was locked on March 4, 2008 and it will remain locked during the pending arbitration proceedings in accordance with article 8 of the Regulations.

In accordance with article 7.1 and 7.3 Regulations, the formal date of commencement of the arbitration proceedings is March 7, 2008. On the same date, the Defendant was notified of the Complaint and the arbitration proceedings that had commenced against it, in accordance with Articles 5.5, 7.1 and 7.3 of the Regulations.

The Center did not receive a Statement of Defence from the Defendant. Accordingly, the Center notified the Defendant of its default on March 31, 2008. The Center further notified the Defendant that it would proceed to appoint an Arbitration Tribunal.

On April 10, 2008, the Center appointed Tobias Cohen Jehoram as sole arbitrator, in accordance with article 10.11 of the Regulations. The Tribunal finds that it was properly constituted. The Tribunal has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Regulations to ensure compliance with article 10.9 of the Regulations.

4. Factual Background

The Plaintiff is the owner of numerous trademark registrations for word marks and device marks containing the elements ‘THE BODY SHOP’ in various countries throughout the world. The Plaintiff is the owner amongst others of the following registered Benelux and Community trademarks:

- Benelux registration No. 0423958 (THE BODY SHOP word trademark), registered in classes 3 and 8 (inter alia for: perfumes, soaps, shampoos, cosmetics, non-medicated toilet preparations; anti-perspirant preparations; nail care preparations, nail varnish; pumice stone, cotton sticks), filing date October 8, 1986;

- Community registration No. 002305175 (THE BODY SHOP word trademark) registered in classes 35, 36 and 42 (inter alia for retail services in respect of beauty products; services relating to the establishment of business and retail stores; charitable fund raising; educational and training services including conducting training seminars, conferences, and workshops in the field of philanthropic, humanitarian and services activities) filing date July 11, 2001, date of registration June 12, 2003;

The Defendant has registered the Domain Name on November 17, 2005.

5. Parties’ Contentions

A. Plaintiff

The Plaintiff sets out that The Body Shop International plc. was founded in March 1976. It started out as a single shop selling cosmetic products and grew exponentially into a large international company with shops worldwide. In the Netherlands there are over 40 local Body Shop stores. In 1994, The Body Shop At Home was introduced, being a direct selling arm of the existing business and it now sells successfully online throughout the world.

The Plaintiff contends that it has registered the trademark THE BODY SHOP as a word mark in respect of cosmetic products in several classes in more than 90 countries including the Benelux (covering The Netherlands), including the trademark registrations listed under 4. above (Factual Background). The Plaintiff bases its complaint on its numerous trademark registrations for the name THE BODY SHOP and in particular the Community trademark registration with registration number 002305175. The Plaintiff contends that it is the owner of the well known trademark THE BODY SHOP and that the contested domain name is confusingly similar to the Plaintiff’s registered trademark THE BODY SHOP.

The Plaintiff argues that it first became aware of the Defendant’s registration of the contested domain name in December 2007. A cease and desist letter was sent by the Plaintiff to the Defendant on December 7, 2007 advising the Defendant that the unauthorized use of THE BODY SHOP trademark as a domain name violated the Plaintiff’s rights in such trademark.

The website connected to “www.debodyshop.nl” shows that the Domain Name is connected to a website “http://voetenwereld.nl” maintained in Dutch. The website is amongst others promoting beauty products; an area with close connection to The Body Shop as contended by the Plaintiff. According to the Plaintiff, the Defendant is trying to exploit the goodwill and fame of THE BODY SHOP trademark and the Defendant could not ignore - at the time of registration of the contested domain name – the Plaintiff’s trademark rights in the words THE BODY SHOP, registered as a trademark almost 20 years before. The Plaintiff contends that the Defendant has deliberately chosen a domain name based on a registered trademark with the intention to cause confusion.

Further, the Plaintiff argues in particular that the dominant part of the Domain Name is identical to the registered trademark THE BODY SHOP. According to it, the Domain Name is even more confusingly similar since the pronunciation of the word “the” is often “de” in non English speaking countries. The Plaintiff states that readers are bound to get confused by the domain name of the Defendant and will certainly relate it to the Plaintiff. The likelihood of confusion includes an obvious association with the Plaintiff’s well-known trademark.

In addition, the Plaintiff contends that it has not found that the Defendant has any registered trademarks or trade names corresponding to the Domain Name or it has been using THE BODY SHOP in any other way. Neither has any license or other authorization been given by the Plaintiff to the Defendant to use the trademark THE BODY SHOP. The Defendant cannot claim a legitimate interest based only on the domain name registration either as it was registered subsequent to the trademark registrations.

The Plaintiff has therefore requested that the Arbitration Tribunal appointed in these proceedings issue a decision that:

1. The Plaintiff shall become the holder of the domain name <debodyshop.nl> instead of the Defendant and that the award shall replace the form required by SIDN for the Change of Domain Name Holder.

2. The Defendant shall be prohibited from registering domain names similar to the contested domain name <debodyshop.nl> in the future, liable to a penalty of EUR 5,000,-.

3. The Defendant shall pay the costs of the procedure, including the Plaintiff’s cost of legal assistance which at the time of filing of this Complaint amount to approximately EUR 5,250,-.

4. The award, in accordance with Article 23.5 of the Regulations, be declared enforceable regardless of whether an appeal against the award is lodged.

B. Defendant

The Defendant has not submitted a Statement of Defence to the Center. Consequently, the Defendant should be considered to be in default.

6. Discussion and Findings

Jurisdiction and applicable law

The Defendant registered the Domain Name on November 17, 2005. Pursuant to article 21.2 of the Regulations for registration of .nl domain names of SIDN, the Defendant thereby submitted to these arbitration proceedings. SIDN has submitted records confirming the applicability of these arbitration proceedings to the registration of the Domain Name. The Plaintiff’s submission of the Complaint thus constitutes an arbitration agreement between the parties.

This arbitration agreement cannot be deemed to lead to the determination of legal consequences which are not at the free disposal of the parties in the sense of article 1020.3 Dutch Code of Civil Procedure and therefore forms a valid basis for this arbitration. Considering this, as well as the legal basis of the Complaint under – inter alia – Benelux trademark law and Community trademark law, the Tribunal has jurisdiction to render an arbitration award under article 11.2 of the Regulations.

Language and Place of Arbitration

In accordance with article 17.2 of the Regulations the language of the proceedings is English. In accordance with article 17.4 of the Regulations the place of arbitration is Amsterdam, the Netherlands. The domicile of the Tribunal is The Hague, the Netherlands.

Substantive Discussion regarding the Dispute

Since the Defendant has not submitted a Statement of Defence, the Tribunal will, pursuant to article 9.4 of the Regulations, assess the case on the basis of the Complaint. The Tribunal shall allow the claims of the Plaintiff, unless the Plaintiff’s claims appear ungrounded or unlawful to the Tribunal.

According to article 2 of the Regulations, the Tribunal shall decide whether the Domain Name, by its registration and/or use, infringes the Plaintiff’s trademark rights (which may include rights to Benelux and/or Community trademarks) and/or Dutch trade name rights. The Plaintiff has not based its complaint on any Dutch trade name rights. Consequently, the Tribunal will only deal with the alleged infringement of its trademark rights. The Tribunal is satisfied that the Defendant’s use of the trademark meets the requirements of this provision and thereby infringes upon the Plaintiff’s trademark rights, for the reasons set out below.

Upon review of the Complaint and its annexes, the Tribunal finds that the Plaintiff has sufficiently demonstrated its Benelux and Community trademark rights listed under 4. above. The Tribunal further finds that the Domain Name is substantially similar to the Plaintiff’s well-known trademark THE BODY SHOP and is being used for similar services as well as non-similar services.

On the basis of article 9(1)(b) of the Community Trademark Regulation 40/94 (‘CTMR’), the holder of a Community trademark can invoke protection against use of a similar sign for similar goods or services where there exists a likelihood of confusion on the part of the public. In accordance with article 9(1)(c) CTMR, the holder of a trademark can also invoke protection against use of a similar sign for goods or services which are not similar (ECJ January 9, 2003, case C-292/00 (Davidoff/Gofkid)), where the trademark has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trademark.

On the basis of article 2.20(1)(b and c) of the Benelux Treaty on Intellectual Property (‘BTIP’) , the holder of a Benelux trademark can invoke protection on similar grounds as set out above in relation to the CTMR, provided in relation to paragraph c that the trademark has a reputation in the Benelux.

The Domain Name <debodyshop.nl> is a sign substantially similar to the Plaintiff’s trademarks THE BODY SHOP. It is well established that the top level domain “.nl” is irrelevant for the assessment of identity or similarity between the trademark and the Domain Name, see e.g. Aereco SA v. Koston Gelderland B.V., WIPO2007NL14. The remaining part “debodyshop” of the Domain Name is very similar to the word trademarks THE BODY SHOP, given the fact that the dominant part “bodyshop” is identical to the dominant part of the trademarks, while the remaining element “ de” is a translation into Dutch of the English article “the”. The similarity is even stronger since the Dutch article “de” is pronounced in almost the same way as the English “the”.

The Domain Name has been used, and is being used, in relation to services which are similar as well as non-similar. The Defendant has used it to connect visitors to its website “ http://voetenwereld.nl”, by which the Defendant promoted its training institute known as Joan Opleidingen, for pedicures, beauticians and cosmetology and the related trainings provided by it. The website further contained a link to an online shop selling various beauty products, especially for nail treatments. The Tribunal finds that the use of the Domain Name for its website “ http://voetenwereld.nl” can be seen as use of a sign for similar goods and services compared to at least those services for which the Community trademark is registered. The use is causing a likelihood of confusion amongst the relevant public.

The Defendant is currently using the Domain Name to connect visitors to its website “ www.joanopleidingen.nl” to promote its training institute for pedicures, beauticians and cosmetology and the related trainings provided by it. This website does no longer contain a link to the online shop as aforementioned. The Tribunal finds that the use of the Domain Name for its website “www.joanopleidingen.nl” can be seen as use of a sign for similar services compared to at least those services for which the Community trademark is registered. The use is causing a likelihood of confusion amongst the relevant public.

Furthermore, in as far as the use relates to non-similar services, compared to the goods and services for which the Benelux trademark and Community trademark are registered, such use takes – without due cause – unfair advantage of the distinctive character and the repute of the Plaintiff’s trademarks, which have a (strong) reputation in the Benelux. At the time of registration of the Domain Name, the Defendant must have been aware of the Plaintiff’s older (trademark) rights in the famous THE BODY SHOP trademark and the worldwide use made by it. The use of a sign which is so similar to the trademark in a domain name, is obviously meant to attract traffic to that website and/or to suggest a commercial link with Plaintiff’s organization, products and/or services. In all those cases Defendant takes unfair advantage of the distinctive character and of the repute of the trademark(s) of Plaintiff.

As there is no evidence that the Plaintiff has consented to use by the Defendant of its trademarks as part of the Domain Name, the Defendant by using the Domain Name for its respective websites infringes upon the trademark rights of the Plaintiff, at least in the manner set out in article 9(1)(b) CTMR.

Since the Tribunal finds it sufficiently established by the Plaintiff that its trademarks are well-known in the Community as well as the Benelux, and thus have a reputation as required, the Defendant by using the Domain Name for its respective websites also infringes upon the trademark rights of the Plaintiff, in the manner set out in article 9(1)(c) CTMR as well as article 2.20(1)(c) BTIP.

Therefore, the Tribunal shall award the requested remedy that the Plaintiff shall become holder of the Domain Name instead of the Defendant and that this award shall replace the form required by SIDN on the basis of article 24.3 of the Regulations for the change of the domain name holder.

The Plaintiff has also requested that the Defendant be prohibited from registering domain names similar to the contested domain name <debodyshop.nl> in the future, liable to a penalty of EUR 5,000,-.

It has been well established in previous “.nl” awards that a general order to prohibit a defendant from registering domain names similar to the contested domain name is not admissible. The Tribunal understands however that the Plaintiff seeks a remedy that such future domain names shall not infringe one or more trademark(s) of the Plaintiff, which claim will be granted.

The Tribunal has decided that it will reject the request for imposing a penalty. The Plaintiff has not contended nor demonstrated that the Defendant has registered infringing domain names in the past and/or currently holds other infringing domain names.

Since the claim of Plaintiff is substantially awarded, the Tribunal will award the Plaintiff’s claim for payment by the Defendant of the administration costs and of the Tribunal’s fee in a total amount of € 2,250,-. On the Plaintiff’s claim for payment by the Defendant of the costs of legal representation, the Tribunal awards € 3,000,- which amount the Tribunal considers appropriate in light of the above considerations and circumstances, as well as the effort needed to draft a Complaint that covered all the aspects of the infringement at hand.

In accordance with article 23.5 of the Regulations and as requested by the Plaintiff, the Tribunal declares this award enforceable regardless of whether an appeal against the award is lodged.

7. Decision

With reference to article 3 of the Regulations and the facts and findings set out above, the Tribunal decides as follows:

1. The Plaintiff shall become the holder of the Domain Name <debodyshop.nl> instead of the Defendant;

2. With respect to the deed required by SIDN for the change of the Domain Name Holder the Tribunal declares that, to the extent necessary, this award shall replace this deed;

3. Defendant shall be prohibited from registering domain names which infringe upon the Plaintiff's trademark right(s) in the trademark THE BODY SHOP;

4. Since the claim of the Plaintiff is substantially granted, the Tribunal awards, on the basis of article 28.8 of the Regulations, the costs of the arbitration procedure in the amount of € 2,250,- and the Plaintiff’s costs of legal assistance in an amount of € 3,000,-, therefore a total of € 5,250,-;

5. The Tribunal declares this award enforceable regardless of whether an appeal against the award is lodged.

Tobias Cohen Jehoram
Sole Arbitrator
The Hague

Dated: April 23, 2008