Complainant is Vorwerk International AG, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Pruvorst Smith, UNiversalfnc, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 14, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on January 27, 2021. 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, Vorwerk International AB, a company incorporated in 1970 and based in Switzerland, is a subsidiary of Vorwerk & Co. KG. Vorwerk & Co. KG, Complainant’s holding company, was founded in Wuppertal, Germany, in 1883. Originally a carpet factory, Vorwerk & Co. KG is now an international corporate group (the Vorwerk Group) with a diverse portfolio of products and services, including high-end household appliances such as kitchen appliances, vacuum cleaners, cosmetics, as well as leasing and financing services. The Vorwerk Group is present in over 80 countries across Europe, Asia, North and South America, as well as Australia and parts of Africa, either through its subsidiaries or trading partners (also known as “distributors”), employing over 600,000 people worldwide. Vorwerk Group’s main websites are available at “www.vorwerk.com” and “www.vorwerk.de”. Included in Complainant’s line of kitchen appliances is Complainant’s Thermomix devise. Thermomix is a multifunctional kitchen appliance with over 20 kitchen appliances combined in a single unit. Inter alia it weights, mixes, chops, grinds, kneads, blends, steams, cooks, whisks, stirs, emulsifies, and has controlled heating. The idea of the Thermomix device has its origins in France when in 1970 the then CEO of Vorwerk France suggested designing an appliance that could mix and cook at the same time. Shortly thereafter, in 1971, the original Thermomix VM 2000 was launched on the market, first in France, then in Spain and Italy. Since then, Vorwerk has continued to develop new and improved Thermomix models, the latest being the Thermomix TM6, which was released in 2019. Complainant’s Thermomix products have acquired considerable goodwill and reputation throughout the world. In 2019, the Vorwerk Group’s revenue reached EUR 2.9 billion, including EUR 1.26 billion in revenue from the Vorwerk Thermomix division, representing approximately 43 percent of total sales volume. The renown and popularity of the Thermomix TM 6 widely reported in the press. Reflecting its global reach, Complainant (either itself or through members of its corporate group), is the owner of a number of domain names consisting of or including Complainant’s THERMOMIX mark, including Complainant also provides a range of vacuum cleansers and other cleaning appliances under the KOBOLD mark. Launching in 1929, the product Kolbold is one of Complainant’s oldest-established divisions. Today, the Kobold product line encompasses upright-cannister-type vacuum cleaners, as well as an autonomous robot vacuums, and a window cleaner. In 2019, Complainant’s Kobold products generated EUR 708 million. Complainant has also made substantial investments to develop a strong online presence by being active on various social-media platforms. Complainant’s official Thermomix Facebook page for its French customers has 470,000 “likes” and Complainant’s global YouTube channel has some 28,000 subscribers. Complainant has secured registrations for the mark VORWERK (“the VORWERK Mark”) in jurisdictions throughout the world, including without limitation: International Trademark Registration No. 637267 VORWERK registered on January 11, 1995 and European Union Trade Mark Registration No. 002212678 VORWERK registered on August 5, 2002. The Disputed Domain Name was registered on June 3, 2020. The Disputed Doman Name resolves to a French-language website with translated versions of the website also available in English, German, Italian, and Spanish (“Respondent’s Website”). Respondent’s Website is titled “Boutique en ligne Thermomix” (“Thermomix Online Store”) and purports to offer for sale Complainant’s Thermomix products at discounted prices. In addition to Complainant’s Thermomix product, Respondent’s Website purports to offer products for sale under Complainant’s KOBOLD Mark, as well as a range of unrelated third-party products, including household appliances, mobile phones, mobile phone accessories, laptops, etc. Respondent’s website prominently displays the VORWERK Mark in the top left corner of its homepage and makes use of the same green-and-white color scheme used by Complainant on its official website available at “www.thermomix.com”. Respondent’s Website includes copyright images of Complainant’s products that have been misappropriated from Complainant’s official website. Payment for goods advertised on Respondent’s Website may be made by bank transfer or by credit card. Respondent has included the address “7 Boulevard Des Capucines, 75002 Paris, France”, which corresponds to the location of the official Complainant’s Vorwerk retail store in Paris, France. 5. Parties’ Contentions A. Complainant Complainant contends that it has numerous registrations of the VORWERK Mark. Complainant further contends that the entirety of the VORWERK Mark in contained within the Disputed Domain Name, with only the addition of the descriptive term “-shopline” and the generic Top-Level Domain (“gTLD”) “.com” – neither of which is distinctive. Complainant contends that Respondent is not a licensee of distributor of Complainant. Complainant further contends that Respondent is not affiliated with Complainant in any way. Complainant has not been granted any authorization to Respondent to make use of the VORWERK Mark in a domain name or otherwise. Complainant alleges that Respondent has not been commonly known by the Disputed Domain Name. Complainant alleges that Respondent has actual knowledge of the VORWERK Mark and is taking advantage of the goodwill associated with the VORWERK Mark for Respondent’s illegitimate commercial gain, all in furtherance of a fraudulent scheme to deceive Internet users. Complainant has located online reports indicating that Respondent’s Website is a fake website, from which Complainant infers that Respondent is making use of the Disputed Domain Name in connection with the furtherance of a fraudulent advance-fee scheme whereby bank transfers are made by unsuspecting Internet users, or credit cards are charged for goods advertised on Respondent’s Website that Respondent has no real intention of providing. Complainant alleges Respondent’s Website is fraudulent in nature because: (i) the goods offered are via Respondent’s Website are listed substantially below market value; (ii) Complainant’s goods are sold under a specific distribution model, i.e. via direct sales or through selected distributors in some countries only; (iii) Respondent has misappropriated copyrighted product images; (v) Respondent appears to have provided false or incomplete contact detail in the WhoIs and has listed the address of Complainant’s retail location in Paris, France as its own, despite having no relationship with Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the VORWERK 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. A. Identical or Confusingly Similar Complainant contends that the Disputed Domain Name is identical with and confusingly similar to the VORWERK Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that it has numerous registrations of the VORWERK Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the VORWERK Mark. Respondent has not contested Complainant’s contentions that it owns numerous registrations of the VORWERK Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable trademark rights in the VORWERK Mark. Complainant alleges that the Disputed Domain Name is confusingly similar to the VORWERK Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further alleges that the entirety of the VORWERK Mark in contained within the Disputed Domain Name, with only the addition of the descriptive term “-shopline” and the gTLD “.com” – neither of which is distinctive. See section 1.7 of the WIPO Overview 3.0, which says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also see section 1.8 of the WIPO Overview 3.0, which instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see section 1.11.1 of the WIPO Overview 3.0, which instructs that gTLDs such as “.com” may be disregarded for purposes of assessing confusing similarity. The Panel finds that the entirety of the VORWERK Mark is included in the Disputed Domain Name and that the term“-shopline” is descriptive. The gTLD “.com” may be disregarded. Therefore, Complainant has shown the necessary elements to prove confusing similarity under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant alleges that Respondent has not been commonly known by the Disputed Domain Name. Complainant alleges that Respondent has actual knowledge of the VORWERK Mark and is taking advantage of the goodwill associated with the VORWERK Mark for Respondent’s illegitimate commercial gain, all in furtherance of a fraudulent scheme to deceive Internet users. Complainant alleges Respondent’s Website is fraudulent in nature because: (i) the goods offered are via Respondent’s Website are listed substantially below market value; (ii) Complainant’s goods are sold under a specific distribution model, i.e. via direct sales or through selected distributors in some countries only; (iii) Respondent has misappropriated copyrighted product images; (v) Respondent appears to have provided false or incomplete contact detail in the WhoIs and has listed the address of Complainant’s retail location in Paris, France as its own, despite having no relationship with Complainant. The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name. Respondent has failed to contest Complainant’s presentation. Therefore, the Panel finds that Complainant has made the requisite showing under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the VORWERK Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the VORWERK Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product. Complainant alleges that Respondent has actual knowledge of the VORWERK Mark and is taking advantage of the goodwill associated with the VORWERK Mark for Respondent’s illegitimate commercial gain, all in furtherance of a fraudulent scheme to deceive Internet users. Respondent has not contested these allegations and the Panel finds that Complainant has satisfied the elements of paragraph 4(b)(iv) of the Policy. Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. 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 Richard W. Page
Sole Panelist
Date: February 10, 2021
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