The Complainant is Vorwerk International AG of Wollerau, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Andrea Stefek of Hamburg, Germany (“First Respondent”), Michael Zopf of Berlin, Germany (“Second Respondent”), Geidbchel Andra of Nordrhein-Westfalen, Germany (“Third Respondent”), Sarah Quander of Nordrhein-Westfalen, Germany (“Fourth Respondent”), Kevin Frey of Ditzingen, Germany (“Fifth Respondent”), Anette Engelmann of Bayern, Germany (“Sixth Respondent”), R. S. (Name Redacted)1 of Vienna, Austria (“Seventh Respondent”), and Vorwerkclub of Vienna, Austria (“Eighth Respondent”). 2. The Domain Names and Registrars
The disputed domain names and are registered with Ascio Technologies Inc.; the disputed domain names , , , and are registered with Eranet International Limited; the disputed domain name is registered with NameSilo, LLC; the disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR; the disputed domain names and are registered with D SRL (NameSilo, LLC, PDR Ltd. d/b/a PublicDomainR, Eranet International Limited, Ascio Technologies Inc., D SRL, are referred altogether as the “Registrars”).
The disputed domain names mentioned above shall be collectively referred to as the “Disputed Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2016. On December 2, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On December 2, 3, 5, 15, 20, 2016, the Registrars respectively transmitted by email to the Center its verification response confirming that the Respondents are listed as the corresponding registrants for the disputed domain names and providing the contact details.
The Center sent an email communication to the parties on December 27, 2016 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain names and is Spanish. The Complainant submitted a request for English to be the language of the proceeding on December 27, 2016. The Respondent did not submit any communication regarding the language of the proceeding.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 31, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 6, 2017. 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.
On February 17, 2017 the Center received a communication from a lawyer representing Dr. Andrea Stefek stating that her client did not infringe any domain name rights especially with regards to the mentioned email addresses. He also added that she might be a victim of fraudulent doings and that they are in contact with the prosecution department in Munich (Germany).
In light of this, the Complainant representative sent an email to the Center on February 20, 2017 where it stated that “On behalf of the Complainant we would just like to underline that Dr. Steffek has clearly been the victim of identity theft, which further demonstrates the real respondent(s)’ bad faith and fraudulent activities”. 4. Preliminary Matter: Multiple Respondents
The Complainant has requested the consolidation of multiple Respondents in respect of all the Disputed Domain Names. The Complainant explains the relationship between all the registrants at length in its complaint.
The Complainant explains the following:
a) the Respondents all appear to be based in Germany (with the exception of the Seventh and Eighth Respondents although it should be noted that the Eighth Respondent’s email addresses is with a German provider (as shown by the email address which ends “@”).
b) the Disputed Domain Names were resolving to very similar websites offering the Complainant’s “Thermomix TM5” product for sale. In this regard, it should be noted that although the Complainant was unable to secure screen captures of the websites associated with the Disputed Domain Names
, , and , it is reasonable to infer that the Disputed Domain Name (registered by the First Respondent) was also likely resolving to the same website to which the Disputed Domain Names and were pointing as these are also registered to the First Respondent. Likewise, it is reasonable to infer that the Disputed Domain Name (registered to the Fifth Respondent) was also likely resolving to the website to which the Disputed Domain Name (also registered to the Fifth Respondent) was resolving. The Domain Name (registered to the Third Respondent) was also likely resolving to the same website to which the Disputed Domain Name (also registered to the Third Respondent) was resolving. It also seems likely that the Disputed Domain Name (registered to the Fourth Respondent) was resolving to the same website to which the Disputed Domain Name (registered to the Third Respondent) was resolving, given that they have the same registrant organization (Vorwerk GmbH) and have addresses in Nordrhein-Westfalen, Germany and similar phone numbers.
c) the Disputed Domain Names share a similar structure consisting of the Complainant’s THERMOMIX, TM5 and VORWERK trademarks (or variation thereof) in conjunction with a descriptive term, such as “kaufen” (“buy” in German), “kauf” (“purchase” in German”), “onlinewelt” (“onlineworld” in German), “haushalt” (“household” in German), “online”, “shop” and “shopping”, separated by a hyphen;
d) the Disputed Domain Names were registered within a six month period (between June 16, 2016 and November 8, 2016); in this regard, the Complainant submits that the Respondents appear to be using different aliases to register domain names infringing the Complainant’s trademarks and to set up essentially identical websites with the intention of misrepresenting itself as the Complainant or one of its affiliates in order to defraud customers who wish to purchase the Complainant’s Thermomix TM5 product (as explained below). Once it becomes known by the online community that the website in question is fraudulent, the Respondents quickly take it down and then proceeds to register another domain name infringing the Complainant’s trademark(s) (using a different alias) and uses it to resolve to an almost identical fraudulent website.
e) The Disputed Domain Names (registered by the First Respondent) and
(registered to the Second Respondent) were registered on the very same day, July 7, 2016.
f) The Disputed Domain Names (registered by the Second Respondent), and (registered by the Third Respondent), (registered by the Fourth Respondent), and (registered by the Sixth Respondent) were registered with the same registrar (Eranet International Limited) and using the same name servers (Cloudflare Inc.).
g) The Disputed Domain Name (registered to the Fifth Respondent), whilst registered using a different registrar, was resolving to the same website to which the Disputed Domain Names (registered by the Second Respondent) and (registered by the Third Respondent) were resolving.
h) The Seventh and Eighth Respondents share the same address in Austria and are also falsely using the name of R. S. , the Complainant’s managing director, in the WhoIs details of the Disputed Domain Names and . Furthermore, the Disputed Domain Names (registered by the Seventh Respondent) and (registered by the Eighth Respondent) have been registered using the same registrar, D SRL and are both on the same name servers ( and ). The fact that these Disputed Domain Names are also on the same name servers as described above in paragraph e) also strongly suggests a link with the rest of the Respondents. It should be noted that whilst the website associated with these Disputed Domain Names is slightly different to the others, given that these Disputed Domain Names were the last to be registered, it is likely that the Respondents have deliberately altered the appearance of the websites in an attempt to conceal the link with the previous Disputed Domain Names.
Under paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), proceedings against more than one respondent may be consolidated where “(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.
In this case, there are twelve Disputed Domain Names registered in the name of eight entities or persons, using five Registrars. The Disputed Domain Names were all registered on a short time frame from June 2016 to November 2016.
In light of the Complainant statements and in the specific circumstances of this case, which have not been denied by the Respondents, it is clear that the Disputed Domain Names are under common control by one and the same person using different aliases or different persons acting in concert.
Based on the above, the Panel is satisfied that the Disputed Domain Names are subject to common control, and it would be fair and equitable to all parties to proceed with the consolidation. 5. Factual Background
The Complainant is a company incorporated in Switzerland in 1970. It is a subsidiary of a German company, Vorwerk & Co KG, which was founded in 1883 and is part of the Vorwerk Group of companies. The Complainant is a supplier of household products including a kitchen appliance named “Thermomix” which is able to mix ingredients and cook at the same time. The latest version of this appliance is the “Thermomix TM5”.
The Complainant is the owner of various registrations for the trademarks VORWERK, THERMOMIX and TM5 which include the following:
- International Trade Mark number 598910 for THERMOMIX, registered on February 22, 1993 in classes 7, 11 and 21;
- European Union Trade Mark number 003772341 for a figurative mark for THERMOMIX and a circular blade logo (“the Design”), registered on October 31, 2005 in Classes 11, 16 and 21;
- European Union Trade Mark number 14652846 for TM5, registered on February 15, 2016 with a filing date of October 10, 2015, in classes 7, 11 and 21;
- European Union Trade Mark No. 002212678 for VORWERK and design, registered on August 5, 2002 in classes 3, 6, 7, 9, 20, 21; and
- European Union Trade Mark No. 0973306 for VORWERK and design, registered on February 25, 2008 in classes 3, 7, 11, 16, 28, 35, 41.
The Respondents registered the Disputed Domain Names as follows:
(i) was registered on June 16, 2016 by Andrea Stefek (the First Respondent);
(ii) was registered on July 4, 2016 by Andrea Stefek (the First Respondent);
(iii) was registered on Julye 7, 2016 by Andrea Stefek (the First Respondent);
(iv) was registered on July 7, 2016 by Michael Zopf (the Second Respondent);
(v) was registered on August 22, 2016 by Andra Geidbchel (the Third Respondent);
(vi) was registered on September 3, 2016 Sarah Quander (the Fourth Respondent).
(vii) was registered on September 11, 2016 Kevin Frey (the Fifth Respondent).
(viii) was registered on September 12, 2016 by Kevin Frey (the Fifth Respondent).
(ix) was registered on September 21, 2016 by Geidbchel Andra (the Third Respondent).
(x) was registered on October 8, 2016 by Anette Engelmann (the Sixth Respondent).
(xi) was registered on October 20, 2016 by R. S. (Name Redacted) (the Seventh Respondent).
(xii) was registered on November 8, 2016 by Vorwerkclub (the Eighth Respondent). 6. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Complainant is the owner of the THERMOMIX, VORWERK and TM5 trademarks, including the international and European Union registrations.
(b) The Disputed Domain Names (except for and ) identically reproduce the Complainant’s THERMOMIX, TM5 and VORWERK trademarks with the addition of generic terms, such as “shop”, “onlinewelt” (“online world” in German), “kauf” (“purchase” in German), “kaufen” (“buy” in German), “haushalt” (“household” in German), “online, and “shopping”, separated by hyphens.
(c) The Disputed Domain Names and are confusingly similar to the Complainant’s THERMOMIX and TM5 trademarks, as they partially reproduce the Complainant’s THERMOMIX and TM5 trademarks, in conjunction with the generic terms “shop” and “kaufen”, also separated by hyphens.
(d) The Complainant submits that the addition of generic terms, as described above (as well as the hyphens) in the Disputed Domain Names does not diminish the confusing similarity with the Complainant’s trademarks, but rather reinforces it given that these terms are strongly associated with the Complainant.
(e) The Complainant has not licensed or otherwise permitted the Respondents to use any of its THERMOMIX, VORWERK and TM5 trademarks, and there is no evidence to show that the Respondents are commonly known by the Disputed Domain Names. The Respondents are using the Disputed Domain Names to purportedly sell the Complainant’s “Thermomix TM5” products and the Respondents are instead defrauding customers who attempt to purchase them. Therefore, the Respondents are not using the Disputed Domain Names for a bona fide offering of goods or services, and the Respondents are not making a legitimate noncommercial or fair use of the Disputed Domain Names.
(f) The Respondents must have had registered the Disputed Domain Names in full knowledge of the Complainant and its THERMOMIX, VORWERK and TM5 trademarks. The Complainant’s trademarks are distinctive and well-known worldwide. Some of the websites to which the Disputed Domain Names resolve are allegedly offering the Complainant’s “Thermomix TM5” products for sale, which indicates that the Respondents were clearly aware of the Complainant at the time they registered the Disputed Domain Names. The websites also display the Complainant’s THERMOMIX trademark and have the same look and feel as the Complainant’s official websites (e.g. using the same white and green colours and copying text and images from the Complainant’s website). The Respondents therefore registered and are using the Disputed Domain Names in order to mislead Internet users into believing that the websites to which the Disputed Domain Names resolve are affiliated with the Complainant. The Respondents were using the Disputed Domain Names to deceive customers into purchasing products from the Respondents’ website, without ever delivering any products.
(g) The Respondents appear to have registered the Disputed Domain Names using fictitious names and false contact details in the WHOIS records in an attempt to conceal its identity and cover up its fraudulent activities. For instance, the Disputed Domain Name has been registered using an incomplete address. The registrant organization of the Disputed Domain Names and (registered to the Third Respondent) and the Disputed Domain Name (registered to the Fourth Respondent) is Vorwerk GmbH. The company Vorwerk GmbH, however, does not exist, only Vorwerk GmbH & Co. The Disputed Domain Names and have been registered using the name of the Complainant’s managing director (Mr. R. S.) and the details of the Complainant’s affiliated company Vorwerk & Co. KG, although in Austria, instead of Germany. Prior panels deciding under the Policy have held that providing inaccurate, incomplete or false WhoIs data, as in the present case, constitutes additional evidence of bad faith. B. Respondents
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondents have not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondents to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 7. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”. In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.” A. Language of the proceedings
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant has requested that the language of the proceedings be English. The Complainant states the following reasons: (i) the Disputed Domain Names were registered under the extensions “.com” and “.club”; (ii) the Disputed Domain Names , ,
, consists of the Complainant’s highly distinctive trademarks in conjunction with English terms such as “shop”, “online”, and “shopping”; (iii) the Registration Agreements are available in English; (iv) it would be disproportionate to require the Complainant not to submit the present Complaint in English as this would result in additional expenses and unnecessary delay for the Complainant.
All of the Disputed Domain Names were registered with an English agreement, except for the case of the Disputed Domain Names and that were registered with a Spanish agreement.
The Panel notes that no objection was made by the Respondents to the Complaint being in English nor any request made that the proceedings be conducted in Spanish, the language of the Registration Agreement for only two Domain Names out of twelve Disputed Domain Names. This was despite the Center notifying the Respondents in Spanish and English. The Respondents had ample opportunity to raise objections or make known its preference, but did not.
The Panel believes that it will be disproportionate to establish Spanish as the language of the proceedings for two Disputed Domain Names out of twelve. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Spanish.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of registered trademark rights for the marks THERMOMIX, TM5 and VORWERK.
It has also established to the satisfaction of the Panel that by reason of the Complainant’s trading and promotional activities the marks THERMOMIX and TM5 have become distinctive of the Complainant and its “TM5” product. While the mark TM5 may be considered to be comprised of generic elements, the Panel accepts on the basis of the Complainant’s evidence that it is widely used in commerce to refer to the Complainant’s product and that it is not otherwise prominently used in commerce.
Each of the Disputed Domain Names comprises the whole or a relevant part of one of the Complainant’s marks THERMOMIX or TM5 together with generic words like “shop”, “onlinewelt” (“online world” in German), “kauf” (“purchase” in German), “kaufen” (“buy” in German), “haushalt” (“household” in German), “online”, and “shopping”, separated by hyphens.
The Panel finds that none of these generic additions is sufficient to distinguish any of the Disputed Domain Names from the Complainant’s trademarks and that the generic Top-Level Domains (“gTLDs”), “.com” and “.club”, are also to be disregarded for the purposes of comparison.
In the circumstances, the Panel finds that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the Disputed Domain Names.
Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and burden of production will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorized the Respondents to use the Disputed Domain Names and that the Respondents are not affiliated with the Complainant. The Complainant has not licensed the Respondents the use of its trademark. The Disputed Domain Names are plainly not derived from the Respondent’s names. From the available record, the Respondents do not appear to hold any trademarks for the Disputed Domain Names.
In these circumstances, the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. Accordingly, the burden of production on the second element shifts to the Respondents. The Respondents are in default and have not provided any answer or justification for the registration of the Disputed Domain Names.
The Panel finds that the Complainant has established that the Respondents have no rights or legitimate interests in the Disputed Domain Names. D. Registered and Used in Bad Faith
The Panel accepts the Complainant’s evidence (which the Respondents have not challenged) that the Respondents have used the Disputed Domain Names for the purposes of similar websites which impersonated the Complainant’s own websites and were intended to mislead Internet users into believing that they are dealing with the Complainant or its authorized suppliers. In the circumstances, the Panel finds that, by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of their websites or of a product on their websites (paragraph 4(b)(iv) of the Policy).
The Panel also takes into account the inaccurate, incomplete or false WhoIs data, as additional evidence of bad faith. Finally, the letter sent by an attorney representing the First Respondent dennouncing a case of identity theft and the use of the name of Complainant’s managing director as registrant for the disputed domain name are considered by the Panel as further evidence of bad faith.
The Respondents were using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites, in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names , , , , , , , , , , and be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: March 1, 2017
1 The Panel finds that the Disputed Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Disputed Domain Name. The Panel has redacted the name of this person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorizes the Center to transmit the Annexure to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.
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