Complainant is Vorwerk International AG, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 9, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 12, 2020. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. An email communication was received on October 21, 2020, claiming identity theft. The Center replied to the email on October 27, 2020. No formal Response was filed with the Center. The Center transmitted notice of Commencement of Panel Appointment Process on November 11, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 19, 2020. 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. 4. Factual Background Complainant is a company that is organized under the laws of Switzerland and belongs to the VORWERK group of companies, which originates from Germany and is nowadays an international corporate group with a diverse portfolio of products and services, including high-end household appliances such as the multifunctional kitchen appliance “Thermomix”. Complainant has evidenced to be the registered owner of numerous trademarks relating to its “Thermomix” appliance and related services, inter alia, the following European Union trademark which enjoys protection (until December 31, 2020) also for the territory of the United Kingdom where Respondent apparently is located: - Word/device mark THERMOMIX, European Union Intellectual Property Office, registration number: 003772341, registration date: October 31, 2005, status: active. Moreover, Complainant has demonstrated to own, inter alia, the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is residing in the United Kingdom and registered the disputed domain name on July 12, 2020, which resolves to a website titled “VORWERK Thermomix”, purporting to offer for sale Complainant’s “Thermomix” products at discounted prices, thereby using the same green-and-white color scheme and copyrighted images as contained in/on Complainant’s official website. Moreover, the website under the disputed domain name obviously displays false contact information, which have been modified from the real contact information of some of Complainant’s group companies. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that its “Thermomix” products have meanwhile acquired considerable goodwill and reputation throughout the world. Complainant submits that the disputed domain name is confusingly similar to Complainant’s THERMOMIX trademark as it comprises the latter in its entirety, together with the geographical prefix “uk” and that the number “6” as suffix. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not a licensee or distributor of Complainant, is not affiliated with Complainant in any way, and has not been granted any authorization make use of Complainant’s THERMOMIX trademark, in a domain name or otherwise, (2) Respondent is using the disputed domain name to promote a fake web shop purporting to sell Complainant’s products without intention of providing, (3) Respondent is not prominently and accurately disclosing its lack of relationship with Complainant, but rather seeks to create a misleading impression of being an “authorized reseller”. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given that the content of Respondent’s website makes direct reference to Complainant and its THERMOMIX trademark, it is readily inferable that Respondent clearly had knowledge thereof when registering the disputed domain name, and (2) Respondent misleadingly holds itself out as an authorized reseller of Complainant and is promoting a fake web shop targeting Complainant’s customers as part of a fraudulent scheme. B. Respondent Respondent did not formally respond to the Complaint, however, the Center received an email communication from a third person on October 21, 2020, stating that said third person had nothing to do with the registration and making use of the disputed domain name, but was the victim to an identity theft. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the THERMOMIX trademark in which Complainant has rights. The disputed domain name incorporates the distinctive textual component of the THERMOMIX trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. geographic or descriptive) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “UK” and of the number “6” (relating to the latest “Thermomix” model “TM 6”) does not dispel the confusing similarity arising from the incorporation of Complainant’s THERMOMIX trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s THERMOMIX trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Thermomix” on its own. To the contrary, Respondent obviously runs a website under the disputed domain name which purports to offer for sale Complainant’s “Thermomix” products at discounted prices, thereby using the same green-and-white color scheme and copyrighted images as contained in/on Complainant’s official website and, moreover, displays false contact information which have been modified from the real contact information of some of Complainant’s group companies, all of which is highly likely to confuse Internet users in a fraudulent manner into believing that Respondent’s website is an official website run by Complainant itself. Such making use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the THERMOMIX trademark (notwithstanding its claimed worldwide recognition) when registering the disputed domain name and that it is clearly directed thereto. Moreover, using the disputed domain name, which is confusingly similar to Complainant’s THERMOMIX trademark, to run a website which purports to offer for sale Complainant’s “Thermomix” products at discounted prices, thereby using the same green-and-white color scheme and copyrighted images as contained in/on Complainant’s official website and, moreover, displaying false contact information which have been modified from the real contact information of some of Complainant’s group companies, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s THERMOMIX trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, the Panel further notes that Respondent obviously made use of false contact information when registering the disputed domain name under the name of a third party. This case of an identity theft alone supports the conclusion of registration and use of the disputed domain name by Respondent in bad faith. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy set forth by paragraph 4(a)(iii). 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 name Stephanie G. Hartung 1 Respondent appears to have used the name and contact details of a third person when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: December 2, 2020
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