The Complainant is Vorwerk International AG, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Raluca Jurca, 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 December 2, 2021. On December 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 December 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 7, 2021, the Respondent sent an email asking for clarification on the proceedings. On December 7, 2021, the Center sent an email to the parties, proposing to suspend the proceedings to settle the case. On December 7, 2021, the Respondent replied, stating that it wished to settle the case. On December 8, 2021, the Complainant replied, stating that it did not wish to suspend to settle the case, and filed an amended Complaint.
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 the Respondent of the Complaint, and the proceedings commenced on December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent did not reply to Complainant’s contentions. Accordingly, the Center notified the Respondent’s default on January 17, 2022.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 31, 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, established in 1970 is a subsidiary of Vorwerk & Co. KG, an international corporate group that among others manufacturers the multifunctional kitchen appliance called Thermomix.
Vorwerk & Co. KG is present in over 80 countries of the world, either through subsidiaries or distributors.
In 2020, Vorwerk & Co. KG’s revenue reached 3.2 billion euros, out of which the Thermomix division accounted for approximately 50 percent. The original Thermomix VM 2000 model was launched in 1971 and new and improved models have been introduced to the market since, the latest model being the Thermomix TM6, released in 2019.
The Complainant owns a number of trademarks consisting of or comprising the term Thermomix, including the United Kingdom (“UK”) Trademark Registration No. UK 00801188472 for the word mark THERMOMIX’ registered on November 4, 2014 for multiple classes of goods and services of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks.
Vorwerk UK Limited, the Complainant’s UK subsidiary owns the domain name
The disputed domain name was registered on June 9, 2021, and resolved to a website claiming to sale the Complainant’s Thermomix products at discounted prices. The disputed domain name currently resolves to an inactive website displaying the Complainant’s figurative VORWERK and THERMOMIX trademarks with a notice “We’ll be back soon. We are currently updating our shop and will be back really soon. Thanks for your patience”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its THERMOMIX trademark because it reproduces the trademark in its entirety with addition of number “6” and the abbreviation “uk”, short for the United Kingdom.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent had knowledge of its trademark at the time of registration, since the Respondent’s website makes direct reference to the Complainant and uses its copyrighted images.
The Complainant further states that the Respondent used the disputed domain name to create a misleading impression of association with the Complainant in order to promote a fake web shop aimed at defrauding Internet users.
The Complainant also submits that the Respondent has provided false company details on its website, as well as false underlying registrant details, which facts are additional evidence the Respondent’s bad faith.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the THERMOMIX trademark and for the purpose of this proceeding the Panel establishes that the UK Trademark Registration No. UK00801188472 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. If so, the disputed domain name is normally considered confusing similar to that mark for the purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0.
The disputed domain name comprises of the Complainant’s THERMOMIX trademark, with addition of number “6” and the geographical abbreviation for the United Kingdom “uk”.
According to section 1.8 of the WPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (in this case “com”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The THERMOMIX trademark is the dominant, easily recognizable piece of the disputed domain name and addition of various terms (number “6” and abbreviation “uk”) is not sufficient to avoid a finding of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the THERMOMIX trademark.
The Complainant has never authorized the Respondent to use its trademark in any way, and its prior rights in the trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while 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 the 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.
Despite suggesting intent to settle the case, the Respondent chose not to respond to the Complaint, to the facts and circumstances brought forward by the Complainant. By doing so, the Respondent failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Respondent is not a licensee or distributor of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its THERMOMIX trade mark, in a domain name or otherwise.
The Respondent used the disputed domain name to promote a fake web shop purporting to sell the Complainant’s products. Such use of the disputed domain name is fraudulent, illegal, and cannot create any rights or legitimate interests in the disputed domain name. See section 2.13.1 of the WIPO Overview 3.0.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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.
The Panel finds that the compelling set of undisputed evidence submitted by the Complainant is sufficient to satisfy the bad faith requirement of the Policy, since:
- The Respondent falsely hold itself as an “authorized reseller” of the Complainant, while there is no relationship between the parties and the Respondent is not affiliated with the Complainant in any way.
- The Respondent’s website, which has the same look as the Complainant’s website and incorporates the Complainant’s trademark and copyrighted images taken from the Complainant’s website falsely lead Internet users into believing that they have reached an official Complainant website.
The Panel finds that by using the Complainant’s trademark without authorization in the disputed domain name, misleadingly holding itself as an authorized reseller of the Complainant to promote a fake web shop targeting the Complainant’s customers the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement within the meaning of paragraph 4(b)(iv) of the Policy.
A number of consumer reports expressly state that the Respondent’s website is a fake web shop mirroring the Complainant’s official website and designed to mislead consumers to order and pay for products that they would never receive. Such behavior is not only infringing but qualifies as online fraud, a criminal offence, that is manifestly considered evidence of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The fact that the disputed domain name currently resolve to inactive website does not alter the Panel’s conclusion. According to section 3.3 of the WIPO Overview 3.0, passive holding of a disputed domain name does not prevent a finding of bad faith, and in this context the Panel notes that the Respondent has provided false contact details and false underlying registrant information, in breach of its registration agreement.
For the reasons set out above, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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
Zoltán Takács
Sole Panelist
Date: February 14, 2022