The Complainant is Vorwerk International AG, Switzerland, represented by Moeller IP, Argentina.
The Respondent is Privacy service provided by Withheld for Privacy ehf / Viktor Miroslav, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 4, 2021.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 13, 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 BackgroundThe Complainant is a Swiss company which has traded for over 130 years and focuses on the development and supply of household appliances. The Complainant has for over 40 years been involved in the design, distribution and sale of its well-known Thermomix product, a household appliance that can both prepare and cook food. The Complainant operates direct sales operations in over 70 countries and in the last two years has generated approximately 1.5 billion Euro in sales revenue in connection with its Thermomix product.
The Complainant holds trademark registrations for the word mark THERMOMIX (the “THERMOMIX Mark”) in various jurisdictions. In the United States the Complainant holds a registration for the THERMOMIX Mark with a registration date of June 30, 2015 (registration no. 4762314), registered for various goods and services in Nice classes 7-9, 11, 16, 18, 21, 24, 25, 28-30, 32, 35, 37, and 41. The Complainant also owns over 400 domain names containing the THERMOMIX Mark.
The Domain Name was registered on October 10, 2021. Prior to the commencement of the proceeding the Domain Name resolved to a website (the “Respondent’s Website”) that prominently reproduced the Complainant’s name and purported to offer Thermomix products direct competition with the Complainant. At the time of the decision the Domain Name resolved to a website that is inactive.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s THERMOMIX Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the THERMOMIX Mark, having registered the THERMOMIX Mark in various jurisdictions. The Domain Name is confusingly similar to the THERMOMIX Mark as it consists of the THERMOMIX Mark with the addition of “vk” being an abbreviation of the Complainant’s name.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that, without permission of the Complainant, offers products in direct competition with the Complainant. This does not amount to a bona fide offering of goods and services.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing goods, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the THERMOMIX Mark, having a registration for the THERMOMIX Mark as a trademark in various jurisdictions including the United States.
Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the THERMOMIX Mark since it wholly incorporates the THERMOMIX Mark and adds the abbreviation “vk”. UDRP panels have repeatedly held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884; and Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out an unrebutted prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the THERMOMIX Mark or a mark similar to the THERMOMIX Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Respondent has used the Domain Name to operate a website that purports to offer household appliances under the Complainant’s THERMOMIX Mark. Given the lack of any connection between the Complainant and the Respondent it is highly likely that the products sold by the Respondent are not genuine Complainant products. If this is the case the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s THERMOMIX Mark for a site selling counterfeit products.
Even if the Respondent is offering genuine Complainant products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:
“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather the Respondent, through its use of the Domain Name and the Complainant’s name and logo, is actively impersonating the Complainant online. Furthermore, on its face the Respondent’s Website appears to sell Thermomix accessories that are not produced by the Complainant. Even if the Respondent is reselling genuine Complainant products, its particular use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name.
In addition, UDRP panels have found that domain names similar to a complainant’s trademark especially as is the case here with the mark plus an abbreviation related to the same carry a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the THERMOMIX Mark at the time the Domain Name was registered. The Respondent’s Website purported to offer goods in direct competition with the Complainant and impersonated the Complainant, including prominently displaying the Complainant’s name and logo on the Respondent’s Website. The registration of the Domain Name in awareness of the THERMOMIX Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent has used the Domain Name, which wholly incorporates the THERMOMIX Mark, to offer household appliances, be they genuine or otherwise, in competition with the Complainant under the Complainant’s THERMOMIX Mark and giving the appearance of an affiliation that does not exist. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s THERMOMIX Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(iv)).
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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,
Nicholas Smith
Sole Panelist
Date: December 15, 2021