WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vorwerk International AG v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted

Case No. D2021-0800

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 / Name Redacted.¹

2. The Domain Name and Registrar

The disputed domain name <thermomixonline.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 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 March 19, 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 amended Complaint on March 24, 2021

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 March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. No formal Response was filed; however, two emails from what seemed to be a third party were received on March 26 and 27, 2021. On April 19, 2021, the Center informed the Parties by email that it would proceed with the commencement of Panel appointment process.

The Center appointed Andrew F. Christie as the sole panelist in this matter on April 30, 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 Background

The Complainant is a company incorporated in 1970 and based in Switzerland. It is a subsidiary of Vorwerk & Co. KG, which was founded in Germany in 1883 and is now an international corporate group (the “Vorwerk Group”) with a diverse portfolio of products and services, including high-end household appliances such as kitchen appliances, vacuum cleaners, cosmetics, as well as leasing and financing services. The Vorwerk Group is present in over 80 countries across Europe, Asia, North and South America, Australia and parts of Africa, either through its subsidiaries or trading partners, employing over 600,000 people worldwide.

Included in the Complainant’s line of kitchen appliances is the Complainant’s Thermomix device, a multifunctional kitchen appliance with over 20 kitchen appliances combined in a single unit. The original Thermomix was launched in 1971; the latest model was released in 2019. In 2019, the Vorwerk Group’s revenue reached EUR 2.9 billion, including EUR 1.26 billion in revenue from the Vorwerk Thermomix division.

The Complainant is the owner of several trademark registrations for the word trademark THERMOMIX, including International Trademark Registration No. 11884722 (registered on September 6, 2013) and United States Trademark Registration No. 4762314 (registered June 30, 2015). The Complainant is also the owner of various trademark registrations for the stylized trademark VORWERK.

The Complainant is the owner of a number of domain names consisting of, or including, the Complainant’s THERMOMIX trademark, including <thermomix.com> (registered in 1997) and <thermomix.fr> (registered in 2006).

The disputed domain name was registered on September 30, 2020. The Complainant has provided a screenshot, dated January 7, 2021, showing that it resolved to a website purporting to be an online store selling the Complainant’s Thermomix product and other products at discounted prices. This website prominently displayed the Complainant’s stylized VORWERK trademark and a stylized version of the Complainant’s word trademark THERMOMIX, and made use of a green-and-white color scheme similar to the color scheme used by the Complainant on its official website available at “www.thermomix.com”. On the same date, January 7, 2021, the Complainant’s representatives sent an ISP takedown request to the hosting provider of the Respondent’s website.

The Complainant provided a second screenshot of the website resolving from the disputed domain name, dated March 17, 2021 (being the date it submitted this Complaint), showing that it consisted of a landing page displaying the Complainant’s stylized VORWERK trademark and a stylized version of the Complainant’s word trademark THERMOMIX, followed by text stating: “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. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name comprises the Complainant’s THERMOMIX trademark in its entirety as its leading element, together with the descriptive term “online” under the generic Top-Level Domain (“gTLD”) “.com”; (ii) the addition of the descriptive term “online” does not prevent a finding of confusing similarity with the Complainant’s THERMOMIX trademark, which remains clearly recognizable as the leading element of the disputed domain name; and (iii) the applicable gTLD can be disregarded as it is viewed as a standard registration requirement.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent is not a licensee or distributor of the Complainant, is not affiliated with the Complainant in any way, and has been not authorized by the Complainant to make use of its THERMOMIX trademark, in a domain name or otherwise; (ii) the Respondent has used the disputed domain name to promote a fake web shop purporting to sell the Complainant’s products, in an effort to induce unsuspecting Internet users into making payments for goods that the Respondent has no intention of providing; (iii) the disputed domain name was registered using a privacy service to mask the identity of the underlying registrant, and the Respondent appears to have provided false contact information on the Respondent’s website, including a fake company number and a fictitious United Kingdom company; (iv) the Respondent’s website does not prominently and accurately disclose the Respondent’s lack of relationship with the Complainant, but rather seeks to create a misleading impression of being operated or authorized by the Complainant; (v) the Respondent cannot legitimately claim to be commonly known by the disputed domain name; (vi) there is no evidence of the Respondent having acquired any trademark rights for the strings “thermomix”, “thermomixonline”, or any variation thereof; and (vii) the Respondent is not making a legitimate noncommerical or fair use of the disputed domain name as the Respondent’s website is clearly intended to be commercial in nature.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent’s knowledge of the Complainant and its trademarks, as well as the Respondent’s intent to take advantage of the goodwill associated with the Complainant’s trademarks for the Respondent’s illegitimate commercial gain, is readily inferable from the content of the Respondent’s website, which makes direct reference to the Complainant, makes use of copyrighted images that have been misappropriated from the Complainant’s website, and has been reported as a fake web shop; (ii) the Respondent registered the disputed domain name, having no authorization to make use of the Complainant’s THERMOMIX trademark or any variation thereof, in a domain name or otherwise, with intent to use it in an attempt to create a misleading impression of association with the Complainant in the furtherance of a fraudulent scheme; (iii) by using the disputed domain name to misleadingly hold itself out as the Complainant and to promote a fake web shop targeting customers of the Complainant, the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and goods purportedly advertised therein; and (iv) the Respondent’s registration of the disputed domain name using a privacy service, together with the provision of what appears to be false contact information on the Respondent’s website and what appears to be false or incomplete underlying registrant details, is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, on March 27, 2021, the Center received a third party email in the name of the person disclosed by the Registrar as being the registrant, stating, among other things, that they had no knowledge of the disputed domain name, they hadn’t registered the disputed domain name, various elements of the contact information disclosed by the Registrar were not correct for them, there had been a security breach of their personal information, and whoever had registered the disputed domain name was a fraudster purporting to be them.

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark THERMOMIX followed by the word “online”. The Complainant’s word trademark THERMOMIX is clearly recognizable within the disputed domain name. The addition of the word “online” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its THERMOMIX trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which was displayed the Complainant’s stylized VORWERK trademark, a stylized version of the Complainant’s THERMOMIX trademark, and a range of the Complainant’s goods purportedly being offered for sale at discount rates. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its THERMOMIX word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s THERMOMIX trademark, given that the Complainant’s trademark has been heavily used and that the disputed domain name consists of the Complainant’s word trademark with the mere addition of the word “online”. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 disputed domain name, <thermomixonline.com>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: May 17, 2021

¹ A third party communication to the Center in the name of the person disclosed by the Registrar as being the registrant, the contents of which are set out in Section 5B of this Decision, gives the Panel reason to believe that this case may involve identity theft. For that reason, the panel has resolved: (i) to issue this Decision with the named Respondent redacted from it; (ii) to list the name of the Respondent in the Annex to this Decision; (iii) to direct the Center to not publish the Annex to this Decision or this Decision in a way that makes identifiable the name of the person disclosed by the Registrar as being the registrant; and (iv) to direct the Center to provide to the Registrar, solely for the purpose of implementing this Decision, the Annex to this Decision. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.