The Complainant is Vorwerk International AG, Switzerland, represented by Moeller IP, Argentina.
The Respondent is Elena Moreno, Spain.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 22, 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 December 3, 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 December 7, 2021. On December 9, 2021, the Center received an email communication from a person who identified herself by a name that coincided with the name of the Respondent. This communication was sent from an email address that was different from the email address of the Respondent provided by the Registrar, and contained a statement that the sender of the communication had received the notification for the proceeding but she was not a domain name registrant. The Center informed the Parties about this third-party communication on December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response, and the person who had sent the communication of December 9, 2021 did not send any further communications. Accordingly, the Center notified the Respondent’s default on December 29, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 14, 2022. 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 family enterprise that has grown into a global corporate group over a period of more than 130 years of business. Today it employs around 590,000 people worldwide. Thermomix is one of the business divisions of the Complainant, and it produces and markets a device that both mixes and cooks food. In 2020’s, Thermomix generated EUR 1,584 million in sales.
The Complainant is the owner of the following trademark registrations for the sign THERMOMIX (the “THERMOMIX trademark”):
− the Spanish trademark THERMOMIX with registration No. M2983381, registered on April 25, 2001 for goods in International Classes 7 and 9;
− the German trademark THERMOMIX with registration No. 302013030082, registered on July 17, 2013 for goods and services in International Classes 7, 8, 9, 11, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 37 and 41; and
− the Swiss trademark THERMOMIX with registration No. 647702, registered on August 26, 2013 for goods and services in International Classes 7, 8, 9, 11, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 37 and 41.
The Complainant is also the owner of the domain names
The disputed domain name was registered on October 13, 2021. It is currently inactive. At the time of filing of the Complaint, the disputed domain name resolved to a website that offered for sale products branded with the THERMOMIX trademark.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name is confusingly similar to the THERMOMIX trademark, because it fully reproduces the trademark, just adding the geographical term for “Europe”.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not the owner of any trademark registration, has no connection to the Complainant and has received no authorization by the Complainant to use the THERMOMIX trademark or include it in any domain name.
The Complainant points out that the disputed domain name confused Internet users to believe that it is an official website of the Complainant and that the counterfeit products featured on the associated website are connected to the Complainant. According to the Complainant, the website mentioned many times THERMOMIX as a registered trademark, and reproduces product catalog images and marketing material belonging to the Complainant. According to the Complainant, this demonstrates that the Respondent is free-riding on the Complainant’s reputation and goodwill to mislead unsuspecting Internet users to the disputed domain name’s webpage and creating a false impression that the Respondent is affiliated with and an authorized distributor or reseller of the Complainant. The Complainant points out that the use by the Respondent of the disputed domain name that is confusingly similar to the Complainant’s trademarks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a strategy that lacks bona fides and does not give rise to rights or legitimate interests.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Complainant’s trademark was registered well before the date of registration of the disputed domain name by the Respondent. According to the Complainant, the Respondent selected and used the disputed domain name because it was identical to the THERMOMIX trademark, thus carrying an implicit risk of confusion, intentionally disrupting the Complainant’s business by diverting and misleading consumers looking for genuine products of the Complainant’s company for profit and harming its reputation through the sale of counterfeit products or unauthorized imitations of the Complainant’s products.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. As mentioned in section 3 above, a person who identified herself by a name that coincided with the name of the Respondent sent an email communication from an email address that was different from the email address of the Respondent provided by the Registrar, which communication contained a statement that the sender of the communication had received the notification for the proceeding but she was not a domain name owner. The Complainant and the Respondent did not make any comments on this communication.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond 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 […].”
A. Identical or Confusingly SimilarThe Complainant has submitted evidence that it is the owner of the THERMOMIX trademark and has thus established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The relevant element of the disputed domain name is therefore the sequence “thermomixeurope”, which
incorporates the THERMOMIX trademark together with the geographical term “Europe”, and the THERMOMIX trademark is easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the THERMOMIX trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it is not the owner of any trademark registration, has no connection to the Complainant and has received no authorization by the Complainant to use the THERMOMIX trademark or include it in any domain name. The Complainant claims that the disputed domain name confuses Internet users to believe that it is an official website of the Complainant and offers counterfeit products for sale. The Complainant has thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response in this proceeding and has not provided any specific arguments in support of the existence of any rights or legitimate interests in the disputed domain name. In its informal communication to the Center, sent from an email address that was different from the email address of the Respondent provided by the Registrar, a person who identified herself by a name that coincided with the name of the Respondent, stated that she was not the registrant of the disputed domain name. The sender of this communication however did not deny the statements included in the Complaint or disputed the evidence attached to it, and did not object to her inclusion as a party to this proceeding. Under Article 1 of the Rules, “Respondent” means the holder of a domain-name registration against which a complaint is initiated. Since the Complaint has been initiated against the registration of the disputed domain name, and the Registrar has provided the name and contact details of the registrant of the disputed domain name, which name and contact details have been included in the amended Complaint submitted by the Complainant, the Panel regards the person with this name and contact details as the proper Respondent in this proceeding and will proceed on this basis.
As discussed in section 6.A above, the disputed domain name incorporates the THERMOMIX trademark in combination with the geographical term “Europe”, and the evidence in the case file shows that it has been used in connection with a website offering for sale products bearing the THERMOMIX trademark, which according to the Complainant are counterfeit products. The website included many references to the THERMOMIX trademark and reproduced official product catalog images and marketing material of the Complainant.
In view of the above and in the absence of any denial by the Respondent or evidence to the contrary, the Panel concludes that it is more likely than not that the Respondent has targeted the THERMOMIX trademark when registering the disputed domain name in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the website at the disputed domain name Internet users looking for the Complainant’s products and offering them counterfeit products. This conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights and or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed in the previous sections, the disputed domain name incorporates the THERMOMIX trademark and is confusingly similar to it, and the Respondent has not provided any plausible explanation of its registration and use. According to the undisputed allegations of the Complainant and the evidence submitted by it, the associated website has offered for sale products that are likely to have been counterfeit versions of products offered by the Complainant.
In view of the above, the Panel concludes that the Respondent must have been aware of the goodwill of the Complainant’s THERMOMIX trademark when it registered the disputed domain name, and that it is more likely that the Respondent registered and used it in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s THERMOMIX trademark as to the affiliation of the Respondent’s website and of the origin of the products offered for sale on it as described under paragraph 4(b)(iv) of the Policy.
In view of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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
Assen Alexiev
Sole Panelist
Date: January 25, 2022