Complainant is Vorwerk International AG, Switzerland, represented by Moeller IP, Argentina.
Respondent is Contact Privacy Inc. Customer 0161693865, Canada / Daniela Schafer, Deutscherthermomi, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 27, 2021, 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 July 27, 2021.
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 August 6, 2021. In accordance with the Rules,
paragraph 5, the due date for Response was August 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 31, 2021.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on September 15, 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 BackgroundComplainant is a family enterprise operating internationally selling household appliances, with over 120 people in its Research and Development team. Thermomix is a division of Complainant. In 1970 it designed a kitchen appliance that could both mix and cook. The Thermomix division is represented with its own subsidiaries in a total of 16 countries in Europe, Asia and North America.
Complainant is the registered owner of various trade marks for the THERMOMIX mark (“Complainant’s Mark”), including:
Jurisdiction
Number
Application Date
Class
Uruguay
450860
2013.12.10
9, 21, 35, 41
Oman
OMT1084406
2013.12.10
16
Costa Rica
2013-010463
2013.12.03
7,9,11,16,21,35
Philippines
M11188472
2020.07.16
7, 11, 16, 21, 35
Chile
1137231
2014.12.30
7
Iceland
V0091629
2013.12.27
11, 16, 21, 35, 41, 7, 9
Tunisia
TNE2013001957
2013.12.04
7, 9, 11, 16, 21, 35, 41
Australia
1599284
2013.09.06
7,8,9, 11, 16,18,21,24,25,28,29,30,32,35,37,41
Italy
261873
2013.09.06
7, 9, 11, 16,21,35,42
Singapore
T1400085A
2013.09.06
7, 8, 9, 11, 18,21,24,25,28
Philippines
1188472
2013.09.06
7, 11, 16, 21,35
Kenya
IBD11188472
2013.09.06
7,8,9,11,16,18,21,24,25,28,29,30,32,35,37,41
New Zealand
990713
2013.09.06
7,8,9,11,16,18,21,24,25,28,29,30,32,35,37,41
United States
79141081
2013.09.06
7,8,9,11,16,18,21,24,25,28,29,30,32,35,37,41
Zimbabwe
ZWT2013789
2013.06.20
35
Zimbabwe
ZWT2013787
2013.06.12
16
Complainant is also the owner of a large number of domain names containing Complainant’s Mark.
According to the publicly available WhoIs, the Domain Name was registered on May 19, 2021.
5. Parties’ Contentions A. ComplainantComplainant states that the Domain Name fully reproduces Complainant’s Mark, with the addition of the word “deutscher” which when translated means “German Thermomix”, which is sufficient to cause confusion for Internet users accessing Respondent’s website believing it to be an official site belonging to Complainant.
Complainant contends that the website associated with the Domain Name is offering products for sale that are Complainant’s manufactured products under the THERMOMIX trade mark. Respondent’s website refers to THERMOMIX as a registered trade mark using TM or ®. Complainant’s asserts that this is evidence that Respondent knew of Complainant and has registered, and is using, the Domain Name in bad faith.
Complainant asserts that it has worked for more than 130 years promoting its brand, and that it has given no authorization to Respondent to use Complainant’s Mark or include it in any domain name. Complainant submits that Respondent has selected the Domain Name because it is identical to the THERMOMIX brand, carrying an implicit risk of confusion by association, intentionally trying to attract Internet users to its website for profit, creating the possibility of confusion with Complainant’s Mark.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant operates internationally, selling household appliances. Through its Thermomix division it has a presence in 16 countries in Europe, Asia and North America. Complainant has registered Complainant’s Mark in a number of jurisdictions. These registrations predate the date of registration of the Domain Name.
The Domain Name reproduces Complainant’s Mark in its entirety, along with the term “deutscher”, which denotes Germany. The addition of “deutscher” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the first ground under the Policy is made out.
B. Rights or Legitimate InterestsComplainant asserts that the Domain Name resolves to a website that offers Complainant’s genuine products, sold under Complainant’s Mark. Further, it is alleged that Respondent’s website refers to THERMOMIX as a registered trade mark using the well-known TM or ® symbols. The Panel infers that this is done to give the website an impression of legitimacy. Complainant argues that this conduct creates an implicit risk of confusion by association, by Respondent intentionally trying to attract Internet users to its website for profit, and that this will create confusion. That argument has merit.
On the face of it, the above conduct will create the impression that members of the public are accessing a genuine site, associated with Complainant, when that is not the case. Respondent has neither challenged nor refuted these allegations. The Panel draws the inference that Respondent is benefiting, either directly or indirectly, from wrongly associating himself with Complainant. This establishes a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Absent any response or explanation, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name was not registered and has not been used for any legitimate or fair purpose.
Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithComplainant submits that Respondent’s sale of genuine products on Respondent’s website and its use of the TM or ® symbols in relation to Complainant’s Mark illustrates that Respondent knew of Complainant and has registered, and is using, the Domain Name in bad faith. In the Panel’s view, this conduct indicates that Respondent was aware of Complainant’s rights in Complainant’s Mark.
When translated into English the Domain Name means “German Thermomix”. Together this is likely to denote to Internet users Thermomix related goods or services from or with a German connection.
The Panel therefore concludes that the Domain Name was registered and used for the purpose of taking advantage of Complainant’s reputation in Complainant’s Mark to attract Internet users to Respondent’s website for profit. This amounts to bad faith conduct under the Policy.
The third ground of the Policy is thereby established.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Clive L. Elliott
Sole Panelist
Date: September 29, 2021