WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vorwerk International AG v. Esther Gunawan, Elektrik Serbaguna
Case No. D2021-2368
1. The Parties
The Complainant is Vorwerk International AG, Switzerland, represented by Moeller IP, Argentina.
The Respondent is Esther Gunawan, Elektrik Serbaguna, United States of America, internally represented.
2. The Domain Name and Registrar
The disputed domain name <thermomixindonesia.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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 July 26, 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 July 26, 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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Response was filed with the Center on August 18, 2021.
The Center appointed John Swinson as the sole panelist in this matter on September 10, 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 family enterprise that has been in business for more than 130 years. Thermomix is a business division of the Complainant. This division has 5,900 employees and 59,900 self-employed sales advisors as of 2020. In 1970, the Complainant developed a product that could both mix and cook. This product is sold under the brand THERMOMIX.
The Complainant owns a portfolio of trademark registrations for THERMOMIX in many countries throughout the world. As one example, the Complainant owns Australian Trademark Registration No. 1426471 for THERMOMIX that was filed on May 23, 2011 and registered on July 27, 2012.
The disputed domain name was registered by the Respondent on January 12, 2014.
The Respondent is or was the Indonesian exclusive distributor of the Complainant. The Complainant and the Respondent entered into a distribution agreement in 2011. In 2015, the Respondent had difficulties continuing to import the Complainant’s products into Indonesia. The website at the disputed domain name advertises a THERMOMIX product, being the TM31 model. This is an older model. The website at the disputed domain name states: “TM31 has been discontinued, so our supply is very limited.”
5. Parties’ Contentions
In summary, the Complainant makes the following submissions:
The Complainant has been in business for over 130 years.
Thermomix is a business division of the Complainant.
Thermomix has a long history of innovation and engineering excellence. It was in 1970 that the idea of designing a device that could both mix and cook came and with over 30 years in the market, it aims to make cooking much easier, healthier, and smarter.
The public identifies the Complainant and its products with the famous THERMOMIX trademark.
The Complainant owns trademark registrations for the THERMOMIX trademark.
The disputed domain name was registered after registration of the Complainant’s trademarks.
The registration of a domain name by a third party, unrelated to the Complainant, not only constitutes a risk to the Complainant’s brands and business, but represents an illegitimate benefit to the Respondent, which will be favored by the recognition of the THERMOMIX brand and that violates the obligations subscribed by the true owner of the trademark.
The disputed domain name resolves to a website where shows evidence that the products offered are the Complainant’s manufactured products and that carry the THERMOMIX brand.
The disputed domain name fully reproduces the THERMOMIX trademark, with the only difference being the additional element “indonesia”.
Because of the disputed domain name, Internet users may believe that the website at the disputed domain name is an official site belonging to the Complainant. Such users will be confused regarding the origin or identity of the products offered for sale by the Respondent, logically believing that these products are connected to the Complainant.
The Respondent is aware of the Complainant.
The Respondent is taking advantage of the Complainant’s trademark to give more credibility to the website at the disputed domain name.
The Respondent is not the owner of any trademark registration that gives the Respondent legitimate interests in the disputed domain name.
The Respondent has received no authorization from the Complainant to use the THERMOMIX trademark or to include it in the disputed domain name.
The disputed domain name resolves to a website where it is evident that all the products offered there are the products manufactured by the Complainant and that they bear its trademark, THERMOMIX, an indisputable fact that it has always been known by the Respondent. This with the explicit intention of misleading consumers or tarnishing the good name of the Complainant’s trademarks for profit.
The Respondent selected the disputed domain name precisely because it was identical to the THERMOMIX brand, carrying an implicit risk of confusion by association, intentionally trying to attract Internet users to its website for profit, creating the possibility of confusion with the Complainant’s trademark with respect to its products and even more to its prestige.
In summary, the Respondent makes the following submissions:
The Complainant failed to mention that the Complainant and the Respondent entered a THERMOMIX distributorship agreement with exclusivity rights for Indonesia on January 19, 2011, and that by reaching the Minimum Purchasing Quantities before December 31, 2014, this exclusivity would be extended without time limit.
At the time of signing these documents, the Complainant instructed the Respondent to choose and purchase its own domain name as the Complainant had already purchased <thermomix.co.id> domain name reserved for its subsidiary. The Respondent obliged, and chose and registered the disputed domain name on January 12, 2014. The disputed domain name was created and owned by the Respondent since the very beginning with full approval and acknowledgment from the Complainant.
The Complainant provided the Respondent with all THERMOMIX images, logos, and product information to be used on the website at the disputed domain name.
The Respondent and the Complainant have always used the disputed domain name for all email correspondences, including for THERMOMIX purchase orders, training invitations, and invoices.
The Respondent placed two orders with the Complainant for THERMOMIX products, and met the Minimum Purchasing Quantities in the agreement.
The Respondent had to close its office on October 31, 2015, due to difficulty importing the product with the new import regulations. At the time, the Respondent had leftover stocks of the THERMOMIX TM31. The Complainant had the first right and option to repurchase this stock, but the Complainant did not exercise or express any concerns. The Respondent was left with no other option but to continue selling the remaining THERMOMIX TM31 stock through its website at the disputed domain name. As long as the Respondent did not use <thermomix.co.id> which was reserved by the Complainant for its subsidiary, the Complainant gave full approval to the Respondent’s ownership and use of the disputed domain name.
For the past seven years, the Respondent has never received any contacts, concerns, or complaints from the Complainant regarding the disputed domain name until now.
The THERMOMIX TM31 products advertised by the Respondent on the website at the disputed domain name are original products manufactured by the Complainant and distributed and sold by the Respondent in Indonesia according to the THERMOMIX distributorship agreement, and are not counterfeit products.
The Complainant deliberately left out of the Complaint text from the website at the disputed domain name that shows that there will not be confusion because the website only sells a discontinued product.
The look and feel of the Respondent’s website is different to the look and feel of the Complainant’s website.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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.
The onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As set out above, the Complainant owns trademark registrations for THERMOMIX.
The Panel considers that the disputed domain name is confusingly similar to the Complainant’s THERMOMIX trademark. The disputed domain name includes the Complainant’s trademark in full, plus the addition of the country name of where the Respondent does business.
Where the relevant trademark is recognizable within the disputed domain name, the addition of a geographical term usually does not prevent a finding of confusing similarity under the first element. See, for example, Frontier Distribution LLC v. Dipak Jain, WIPO Case No. D2018-0415.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Respondent does not own any trademark registrations giving the Respondent rights in the THERMOMIX trademark. The Complainant also asserts that the Respondent “has received no authorization of any sort from the Complainant to use the THERMOMIX trademark or to include it in any domain name.” This is the entirety of the case that the Complainant puts forward in relation to the second element. The Panel finds that the Complainant has made out a prima facie case, but only barely.
The evidential burden shifts to the Respondent.
The Respondent asserts that the Respondent was the Complainant’s Indonesian distributor, appointed in 2011 by written agreement. The Respondent did not provide a copy of that written agreement, other than an addendum to that agreement that appears to state that the Respondent has the exclusive distribution rights for Indonesia for an indefinite period.
The Respondent provided invoices from the Complainant and shipping documentation to demonstrate the purchase of many cartons of the THERMOMIX TM31 machine from the Complainant in 2012, 2013 and 2014.
The Respondent also provided evidence that the Complainant emailed the Respondent numerous times in 2014 at an email address that included the disputed domain name. The Complainant invited the Respondent to a sales conference and sales conference calls and the like.
It is concerning that the Complainant did not inform the Panel of the business relationship between the Complainant and the Respondent. The Complaint suggests that the THERMOMIX products offered on the Respondent’s website did not originate from the Complainant, but the Complaint is fuzzy in this regard. The evidence before the Panel provided by the Respondent is to the contrary.
Here, the Oki Data test is relevant. This test derives from the well-known decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Relying on the Oki Data decision, many panels have recognized that resellers and distributors using a domain name containing a trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. The elements of the Oki Data test are as follows:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Oki Data is an exception to a general rule. The general rule is that it is generally not permissible to register a domain name that is the same as another’s trademark rights, knowing of those trademark rights, to seek to generate traffic to a commercial website. Oki Data is a narrow exception to this rule for legitimate resellers, distributors and dealers. Oki Data is also subject to any agreement between the parties. WABCO IP Holdings LLC v. Hasan Mohammadnia, WIPO Case No. D2016-2235.
Further, where the distribution agreement comes to an end, the respondent may cease to have the necessary rights or legitimate interests required under the Policy. See, for example, HDMl Licensing Administrator, Inc. v. S Kumar, Knoxed Limited, WIPO Case No. D2018-2514.
Here, the Respondent clearly meets elements (i), (ii) and (iv) of the Oki Data test. Further, there is no evidence before the Panel that shows that the agreement between the Parties prohibited registration of the disputed domain name. To the contrary, the evidence shows that the Complainant was aware of the disputed domain name and used it in an email address to communicate with the Respondent. The Respondent also states that the Complainant consented to registration of the disputed domain name, however no evidence was provided that showed explicit consent. No evidence was provided by the Complainant to the contrary to show that the Complainant objected to the Respondent’s registration and use of the disputed domain name in the period 2014 to 2015 when the above-mentioned email communications between the Complainant and the Respondent occurred. Evidence before the Panel also shows that the Respondent has indefinite distribution rights for Indonesia. The Complainant had the opportunity to present evidence that the distribution agreement had a prohibition on registration of the disputed domain name, or that the distribution agreement had come to an end such that the Respondent’s rights ceased, but the Complainant provided no such evidence.
In respect of element (iii) of the Oki Data test, although there is no explicit statement on the website at the disputed domain name that sets out the Respondent’s relationship with the Complainant, the website at the disputed domain name does not misrepresent the relationship between the Complainant and the Respondent. The website is branded with the Respondent’s name and contact details, and includes the statement:
“TM31 has been discontinued, so our supply is very limited.”
This would suggest to the average consumer that the Respondent is supplying another’s product.
The Panel notes the following important discussion of this aspect of the Oki Data test:
“The Panel’s assessment of the cited authorities in respect of this criterion make it clear that the predominant concern is deceptiveness in the subject website, in the sense of conduct likely to mislead Internet users as to some relationship between the website operator and the trademark owner. Conversely, if the absence of such a relationship is obvious from the website, even if not expressly stated, so that no reasonable person could be misled in the required way, this should be sufficient to absolve the website operator.” Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134.
On balance, the Panel finds that the Respondent meets the Oki Data test.
The Respondent rebuts the prima facie case made by the Complainant.
The Complainant fails on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Complainant’s case in respect of bad faith appears to be, but is not explicitly stated to be, that the Respondent is selling counterfeit products, and is therefore acting in bad faith. The Complaint states that the Respondent registered and used the disputed domain name “with the explicit intention of misleading consumers or tarnishing the good name of the Complainant’s trademarks for profit.” However, no evidence was provided to support this statement. “A failure to provide any [evidence] cannot be taken to establish anything.” Karen Millen Fashions Limited v. Danny Cullen, supra.
The Panel finds that on the evidence before it, the Respondent was selling genuine THERMOMIX products supplied to the Respondent directly by the Complainant. The Panel cannot see how selling the Complainant’s genuine products tarnishes the Complainant’s good name.
The Complainant has failed to demonstrate that the Respondent registered or is using the disputed domain name in bad faith.
The Complainant’s conduct is very close to reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Date: September 24, 2021