WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vorwerk International AG v. John Mark
Case No. D2018-0858
1. The Parties
Complainant is Vorwerk International AG of Wollerau, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
Respondent is John Mark of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <vorvverk.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2018, 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 April 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 17, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 25, 2018. 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 AG, is a subsidiary of Vorwerk & Co. KG, an international corporate group whose core businesses include the direct distribution of high-end household appliances, carpets and cosmetics, as well as leasing and financing services. Vorwerk & Co. KG currently operates through its subsidiaries, trading partners or distributors in 75 countries across Europe, Asia, North and South America, Australia and parts of Africa.
Complainant is the owner of the name and mark VORWERK and owns trademark registrations for a figurative version of the VORWERK mark, including (i) a registration in the European Union (No. 002212678), which issued to registration on August 5, 2002, and (ii) an International Registration (No. 973306), which issued to registration on February 25, 2008. Complainant is also the owner of multiple domain names that include the VORWERK mark, including <vorwerk.com> that was registered on October 5, 1998 and which is being used to provide information about Vorwerk & Co KG, its subsidiaries, and their products and services.
Respondent registered the disputed domain name on January 18, 2018. On March 20, 2018, Complainant’s attorneys sent Respondent a cease-and-desist letter regarding the disputed domain name. Respondent apparently did not respond to the cease-and-desist letter. While the disputed domain name previously resolved to parked page, it currently does not resolve to any website.
5. Parties’ Contentions
Complainant contends that its VORWERK trademark has acquired considerable goodwill and reputation worldwide in connection with a wide variety of goods and services, including high-end household appliances. Complainant maintains that the fame of the VORWERK mark is established by the significant sales of Vorwerk goods and services and by the number of cybersquatters who have sought to unfairly exploit the goodwill in Complainant’s VORWERK mark.
Complainant asserts that although its trademark registrations for the VORWERK mark are with a design element, such limited design elements should be disregarded for assessing identity of confusing similarity under the first element as the textual component of the registration is VORWERK. Complainant argues that the disputed domain name is confusingly similar to Complainant’s VORWERK mark as it merely consists of an intentional misspelling of VORWERK by replacing the letter “w” with the letters “vv,” which creates the visual impression of a “w.”
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not a licensee of Complainant and has not been otherwise authorized to make use of the VORWERK mark, (ii) is not commonly known by the VORWERK name or mark, (iii) has not made any use of the disputed domain name with a bona fide offering of goods and services, and (iv) has not made any legitimate noncommercial or fair use of the disputed domain name since registering the disputed domain name. Complainant maintains that given the renown of the VORWERK mark, the registration of the disputed domain name that simply consists of a misspelling of the VORWERK mark cannot be considered a legitimate noncommercial or fair use and is basically an attempt to take advantage of Complainant’s rights in the VORWERK mark.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent was likely aware, or should have known, of Complainant’s prior rights in the distinctive VORWERK mark given the worldwide renown of and goodwill associated with the VORWERK mark. Complainant further contends that since the disputed domain name consists of an intentional misspelling of the VORWERK mark, there can be no doubt that Respondent deliberately chose to register the disputed domain name to take advantage of Complainant’s rights in the VORWERK mark. Complainant argues that in view of the renown of the VORWERK mark, the implausibility of any good faith use of the disputed domain name, and the fact that the disputed domain name is a typo domain based on the VORWERK mark, Respondent’s continued passive holding of the disputed domain name since its registration constitutes evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for the VORWERK mark in connection with its goods and services. Complainant has also submitted evidence that it owns and has used the domain name <vorwerk.com> in connection with a website branded as Vorwerk well before Respondent registered the disputed domain name.
With Complainant’s rights in the VORWERK mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s VORWERK mark as it merely a typo version of the VORWERK mark that replaces the letter “w” with the letters “vv,” which in combination mirror a “w.” The fact that Complainant owns trademark registrations for VORWERK as a figurative mark, does not, for purposes of the first element, remove the confusing similarity as the assessment involves a comparison of the textual component of the trademark with the disputed domain name. WIPO Overview 3.0 at Section 1.10. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s VORWERK mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Complainant adopted and has been using the VORWERK mark well before Respondent registered the disputed domain name. The evidence also shows that Vorwerk & Co. KG and its subsidiaries are known for supplying high quality household appliances, carpets, cosmetics and other products and services using the VORWERK mark. Given that the disputed domain name is nothing more than a typo version of the VORWERK mark that is meant to visually copy the VORWERK mark by replacing the letter “w” with the letters “vv” to create “Vorvverk”, it appears more likely than not that Respondent, who has failed to respond or contest this matter, was aware of Complainant’s rights when it registered the disputed domain name. As there is no evidence showing that Respondent has made any bona fide or legitimate use of the disputed domain name, it is likewise likely, on the balance of the probabilities, that Respondent registered the disputed domain name for purposes of exploiting Complainant’s established rights in the VORWERK mark, and not for some other purpose.
In sum, given that Complainant has established with sufficient evidence that it owns rights in the VORWERK mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given the close visual similarity between the VORWERK mark and the disputed domain name <vorvverk.com>, it is easy to infer that Respondent was likely aware of Complainant’s rights in the VORWERK mark when he registered the disputed domain name as a typo version of the VORWERK name and mark. Although Respondent has not made any use of the disputed domain name since registering it on January 18, 2018, the totality of the circumstances as shown by the evidence submitted, none of which is contradicted by Respondent, makes clear that Respondent registered the disputed domain name well after Complainant had established rights in the VORWERK mark, and has, since that time, passively held the disputed domain name in bad faith. First, Complainant has established not only its rights in the VORWERK name and mark, but that the VORWERK name and mark enjoys some notoriety in the context of the direct selling of high-end household appliances and other products. Second, Respondent has failed to participate in this proceeding and, indeed, failed to respond to a cease-and-desist letter sent by Complainant’s attorneys in March 2018 concerning the disputed domain name, thereby suggesting that Respondent does not have a viable legitimate interest in the disputed domain name. Third, it is questionable whether Respondent’s contact information is valid as set forth in the WhoIs records, inasmuch as the Center was advised by DHL, the courier service used by the Center, that the Written Notice sent to Respondent could not be delivered to Respondent’s claimed address in Lagos, Nigeria, where Respondent is allegedly based. Lastly, given the lack of any evidence showing a bona fide use of or good faith basis for registering the disputed domain name, it appears unlikely that Respondent had any legitimate purpose for registering and using the disputed domain name either at the time of registration or going forward.
In sum, what the evidence shows here is that Respondent more likely than not knowingly registered and is using the disputed domain name in bad faith to opportunistically exploit or profit from Complainant’s rights in the VORWERK name and mark. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <vorvverk.com> be transferred to Complainant.
Date: June 4, 2018