WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vorwerk International AG v. WhoisGuard Protected, WhoisGuard, Inc. / Constantin Matraule / Mircea Feniuciuc

Case No. D2020-1830

1. The Parties

The Complainant is Vorwerk International AG, Switzerland, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Constantin Matraule, Romania / Mircea Feniuciuc, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <bimbythermomix.com> and <buythermomix.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2020, 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 amended Complaint on July 21, 2020.

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 August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2020.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 1, 2020. 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

The Complainant is a company based in Switzerland, and a subsidiary of Vorwerk & Co. KG. The Complainant’s holding company was founded in Germany in 1883. It is today an international corporate group with a portfolio of products and services, including household appliances such as kitchen appliances, vacuum cleaners, water purifiers, carpets and cosmetics. The Vorwerk Group is present in over 80 countries, employing over 600,000 people worldwide. The Complainant’s Thermomix products have acquired goodwill throughout the world. In 2019, the Vorwerk Groups revenue reached EUR 2.9 billion, including EUR 1.26 billion in revenue from the Vorwerk Thermomix division.

The Complainant owns numerous trademark registrations for THERMOMIX, such as: United States Trademark Registration No. 4762314, registered on June 30, 2015; United States Trademark Registration No. 3055638, registered on January 31, 2006; European Union Trade Mark No. 003772341, registered on October 31, 2005; and International Registration No. 1188472, registered on September 6, 2013. Furthermore, the Complainant owns numerous trademark registrations for BIMBY, including European Union Trade Mark No. 006289748, registered on July 8, 2008.

The Complainant owns a number of domain names consisting of or including the Complainant’s THERMOMIX and BIMBY trademarks, including <thermomix.com> registered in 1997, <bimby.com> registered in 2014, as well as numerous country-specific domain names. The Complainant has made investments to develop its online presence by being active on various social-media platforms.

The Domain Name <bimbythermomix.com> was registered on November 21, 2019. The Domain Name <buythermomix.com> was registered on April 23, 2020. The Complainant has provided evidence that the Domain Names resolved to websites that prominently display the Complainant’s THERMOMIX trademark with the subtitle “Buy Thermomix Online”. The websites purported to offer the Complainant’s Thermomix products at discounted prices. The Respondent’s websites make use of the same color scheme used by the Complainant on its website, and include copyrighted images of the Complainant’s products that have been misappropriated from the Complainant’s official website. At the time of drafting the Decision, one of the Domain Names resolved to a webpage informing the Domain Name was suspended, the other to an inactive webpage.

5. Parties’ Contentions

A. Complainant

Even if the Domain Names are registered to nominally-distinct underlying registrants, the Complainant requests consolidation into a single Complaint. The Complainant offers the following arguments for the request:

(a) Both Domain Names are registered using the same privacy service.

(b) Both Domain Names are registered with the same registrar.

(d) Both Domain Names are hosted on similar nameservers “ns9.nlkoddos.com”, “ns10.nlkoddos.com”, “ns13.nlkoddos.com”, and “ns14.nlkoddos.com”.

(e) The content of the websites to which the Domain Names resolve (the Respondent’s websites) make use of the same “Ecommerce software by PrestaShop” template, with similar layouts, similar color schemes, and purport to sell the same or similar products. The “Terms and Conditions” pages of both websites list the same company number “GB868919257”, which in reality corresponds to the VAT number for the Complainant's United Kingdom entity Vorwerk UK Limited.

(f) Both of the Respondent’s websites are hosted by the same provider.

(g) Both Domain Names include the Complainant’s THERMOMIX trademark and are registered under the generic Top-Level Domain (gTLD) “.com”.

(h) Both underlying registrants make use of Gmail email addresses.

The Complainant provides evidence of trademark registrations, and argues that the Domain Name <bimbythermomix.com> incorporates the Complainant’s BIMBY and THERMOMIX trademarks together in their entirety. The Domain Name <buythermomix.com> incorporates the Complainant’s THERMOMIX trademark in its entirety, together with the descriptive term “buy” as a prefix. The prefix does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Names. The Respondent cannot establish rights in the Domain Names as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. The Respondent has used the Domain Names to impersonate the Complainant in an effort to induce unsuspecting Internet users into making payments to the Respondent for goods that the Respondent has no intention of providing. The Complainant further argues that even if the Respondent’s offering of goods on its websites was genuine (which the Complainant does not accept as being the case), the Respondent’s use of the Domain Names is not legitimate as the Respondent’s websites do not prominently and accurately disclose the Respondent’s lack of relationship with the Complainant, but rather seek to create a misleading impression of being operated by or authorized by the Complainant.

The Complainant believes the Respondent was aware of the Complainant’s activity and trademark. The Respondent's knowledge of the Complainant and its trademarks is inferable from the contents of Respondent's websites. The Complainant repeats that the Domain Names are being used in connection with a fraudulent scheme aimed at unsuspecting customers of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Complaint consolidated against multiple respondents

The Panel has reviewed the Complainant’s arguments a-g, see above. All arguments put together, in particular the use of similar name servers and the similarity of the Respondent’s webpages, convinces the Panel that the Domain Names, on the balance of probabilities, are subject to common control. Moreover, consolidation would be fair and equitable to all parties. The Respondent has not replied to the Complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademarks BIMBY and THERMOMIX.

The test for confusing similarity involves the comparison between the trademarks and the Domain Names. The Domain Name <bimbythermomix.com> incorporates the Complainant’s BIMBY and THERMOMIX trademarks. The Domain Name <buythermomix.com> incorporates the Complainant’s THERMOMIX trademark, with the addition of “buy” as a prefix. The addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Names are identical or confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names as it has not made use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering. The Respondent’s use of the Domain Names to impersonate the Complainant is not bona fide.

The Panel finds that the Complainant has made out a prima facie case, which remains unrebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel agrees with the Complainant that the Respondent must have been aware of the Complainant when the Respondent registered the Domain Names. It is evident from the Respondent’s illegitimate use of the Domain Names. Furthermore, the Respondent’s use of the Domain Names to impersonate the Complainant supports a finding of bad faith in the circumstances of this case.

For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <bimbythermomix.com> and <buythermomix.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: September 7, 2020