Domain name – Domain name dispute resolution – Wrongful registration – Confusion with trademark – Misrepresentation – Lack of intention to develop

Complainant acquired trademark Body and Soul.  Registrant registered domain name BODYANDSOUL.COM. Complainant claims that registered domain name is identical and confusingly similar.  Registrant registered domain name in bad faith. 

Held, Name Transferred to Complainant

Complainant wrongfully registered domain name.  Domain name BODYANDSOUL.COM is very similar to the registered trademark Body and Soul.  The Registrant had no legitimate interest or rights regarding the domain name.  Domain name was wrongfully acquired by Respondent.
After registering the domain, Respondent offered to sell domain name to Complainant for amount substantially greater than out-of-pocket costs incurred, and there was no substantial development of domain name. This demonstrates a lack of intention on behalf of the Respondent to develop the domain.
Respondent knew or should have known that registering the domain name BODYANDSOUL.COM would cause confusion with the Complainant’s trademark.  Respondent registered domain in order to interfere with use of owner of rightful trademark.  Respondent registered a number of names and had no proof, financial or ability-wise, that he could develop these domains.

Policies referred to:
Uniform Domain Name Dispute Resolution Policy

Johnson, Panelist --
The above-entitled matter came on for an administrative hearing on April 12, 2000 before the undersigned on the Complaint of T. M. PACIFIC COMPANY, INC., dba BODY AND SOUL, A HAWAII CORPORATION, hereafter "Complainant", against ADAM CORELLI, hereafter "Respondent". K. James Steiner, Jr. Esq. represents Complainant. Lisa Balaban, Esq. represents Respondent. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: BODYANDSOUL.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Adam Corelli
3294 Queen Frederica Drive
Mississauga, Ontario L4Y 3B2 
Date of Domain Name Registration: June 17, 1996.
Date Complaint filed: March 2, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 
2(a) and Rule 4(c): March 3, 2000.
Due date for a Response: March 27, 2000. 
Respondent’s Response was filed (dated) March 27, 2000.
After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on March 3, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified NETWORK SOLUTIONS, INC., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).
On June 17, 1996, Respondent registered the domain name BODYANDSOUL.COM with Domain Name Registrar NETWORK SOLUTIONS, INC., the entity that is the Registrar of the domain name. On March 6, 2000, the Domain Name Registrar NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name BODYANDSOUL.COM and that further by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT
The evidence permits the following findings: 
1. Body and Soul is a Trademark registered March 3, 1970 to run twenty years and extended March 3, 1992 to run another ten years. The stated purpose of registration No. 887,252 was for bath oil and bath beads.
2. Complainant acquired the trademark Body and Soul from Aramis, Inc., by assignment dated June 25, 1997. 
3. Respondent Adam Corelli (BODYANDSOUL-DOM) registered BODYANDSOUL.COM on June 17, 1996 
4. BODYANDSOUL.COM is identical to and confusingly similar to Complainant’s trademark BODY AND SOUL. 
5. Although other web sites contain the two words body and soul in various configurations for products and services, the record does not reflect any intent by Complainant to abandon its interest in the trademark.
6. Complainant and the predecessor holder of the trademark used the name Body and Soul from the initial date of registration in 1970 continuously to the present.
7. Complainant established that it individually made use of the trademark prior to the date Respondent registered the name.
8. Respondent offered to sell the name to Complainant for $30,000.
9. On February 12, 1999, Complainant’s counsel sent Respondent notice to cease using the mark and rejected in writing Respondent’s offer. 
10. The record shows that Respondent has at least forty-three registered names and that Respondent’s proof showed a pattern of making numerous name registrations while at the same time failing to show any actual development of the material beyond a listing on a web page.
11. Respondent failed to present evidence that showed a substantive development of the name in issue and the information that he did produce does not show a use and development of the domain name by inspiration, money or labor that would be worth the $30,000. Respondent’s documents show he demanded from Complainant for the domain name.
12. That the following is evidence of Respondent’s bad faith in registering the domain name BODYANDSOUL.COM:
a. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i) Respondent wrongfully registered or acquired the domain name BODYANDSOUL.COM, a name identical to or confusingly similar to the exclusive trademark of another. The Respondent did not develop it but offered it for sale to the Complainant, who is the owner of the trademark as well as to possible competitors of Complainant for valuable consideration in excess of any out of pocket costs directly related to the domain name. Despite Respondent’s offer of proof that showed BODYANDSOUL.COM listed among Respondent’s many other domain name listings. Respondent’s proof did not show any substantive development of the name. Respondent’s proof did not show any out-of-pocket costs directly related to the domain name. This allows the inference that Respondent never intended to develop the name but intended to offer it for sale to the owner of the trademark for a consideration greater than his out-of-pocket expenses associated with the name.
b. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(ii) Respondent wrongfully registered the domain name to which another had the legal right of exclusive use. The record allows the inference that Respondent did this in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Respondent’s documents evidence a course of registering numerous names and his documents evidence a course of being willing to sell them. Respondent offered no proof he has the resources or ability to carry through on the promises of these numerous listings.
c. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iii) and (iv), Respondent registered the domain name BODYANDSOUL.COM while he knew or should have known that it would create confusion with the Complainant’s trademark and that it would disrupt the business of Complainant’s trademark owner by keeping Complainant from developing the name to its fullest potentiality. Further, Respondent misrepresented a right to give others the right to use Complainant’s trademark, purporting to authorize other similar variations of the Complainant’s trademark for internet use.
Complainant’s prayer for relief requests that the domain name BODYANDSOUL.COM be transferred from Respondent to Complainant.

CONCLUSIONS
The undersigned certifies that she has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
1. The domain name BODYANDSOUL.COM registered by Respondent on June 17, 1996, is so close as to be identical or confusingly similar to Complainant’s Trademark BODY AND SOUL, to which Complainant has the exclusive legal right to use and to which Respondent has failed to show any legitimate legal right or interest.
2. Respondent acted in bad faith by registering or acquiring the domain name BODYANDSOUL.COM, by failing to develop it and then by offering it to Complainant for a consideration of $30,000, a sum that is in excess of any amounts shown by Respondent to have been incurred by him as costs or out-of-pocket expenses directly related to the domain name.

DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME BODYANDSOUL.COM REGISTERED BY RESPONDENT ADAM CORELLI BE TRANSFERRED TO COMPLAINANT T. M. PACIFIC CO., INC., dba BODY AND SOUL, A HAWAII CORPORATION, THE OWNER OF THE TRADEMARK BODY AND SOUL.