WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vorwerk International AG v. Super Privacy Service LTD c/o Dynadot / Roux
Case No. D2021-3874
1. The Parties
The Complainant is Vorwerk International AG, Switzerland, represented by Moeller IP, Argentina.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Roux, France.
2. The Domain Name and Registrar
The disputed domain name <othermomix.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 November 24, 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 December 1, 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 December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Antony Gold as the sole panelist in this matter on January 21, 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 Background
The Complainant is a company with its headquarters in Switzerland which designs, manufactures and sells a wide range of products suitable for domestic and consumer use. It trades in 70 countries, has approximately 12,000 employees worldwide and works with approximately 578,000 independent sales partners.
The Complainant’s products include the Thermomix, which is a kitchen appliance first developed in 1970, which can both mix and cook food. The Thermomix is under continual development, with 151 innovations protected by patents. Approximately, 5,900 of the Complainant’s employees work on the Thermomix and it is sold internationally through a network of more than 30 distributors and around 59,000 self-employed sales advisors. The Complainant has protected the “Thermomix” name by trade mark registrations in multiple countries including, by way of example only, International Registration number 1188472 for THERMOMIX, registered on September 6, 2013 in multiple classes, including classes 7, 8 and 11. The Complainant also owns and operates many domain names comprising or including its THERMOMIX trade mark, including <thermomix.com>, <thermomix.de> and <thermomix.eu>.
The dispute domain name was registered on October 15, 2021. It resolves to a website containing pornographic material and some limited related advertising content1.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The disputed domain name fully reproduces the Complainant’s THERMOMIX mark, with the only difference being the addition of the letter “o” before the mark. This does not differentiate the disputed domain name from the Complainant’s mark, to which it is phonetically and graphically identical.
The Complainant says also that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Respondent is not the owner of any trade mark registration that gives it a legitimate interest in the disputed domain name. It has no known connection or affiliation with the Complainant and has not received any authorization from it to use its THERMOMIX trade mark or include it in any domain name.
The Complainant says, lastly, that the disputed domain name was registered and used in bad faith. The Complainant’s THERMOMIX trade marks and associated domain names were registered well before the Respondent registered the disputed domain name. Moreover, due to the fame of the Complainant’s THERMOMIX mark, the Respondent knew or should have known of it prior to registering the disputed domain name. Knowledge, actual or inferred, of a strong mark is evidence of registration in bad faith. The Respondent selected the disputed domain name deliberately because of its substantial similarity with the Complainant’s mark and with the intention to benefit from the Complainant’s reputation and goodwill in its mark. The Respondent is intentionally attempting to attract Internet users to its website for profit, creating the possibility of confusion with the Complainant’s mark and harming its prestige. Moreover, the pornographic materials on the Respondent’s website tarnish the Complainant’s mark and comprise further evidence of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
A. Identical or Confusingly Similar
The Complainant has provided details of its trade mark registrations for THERMOMIX, including the registration in respect of which full details are set out above, and has thereby established its rights in this mark.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s THERMOMIX trade mark in its entirety, preceded by the letter “o”. The addition of this single letter does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview 3.0: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Complainant’s THERMOMIX mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or a name corresponding to the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Having regard to the established and widespread use of the Complainant’s mark, coupled with its distinctive character and the confusing similarity between the disputed domain name and the Complainant’s mark, the disputed domain name has evidently been chosen by the Respondent in order to divert visitors to its website who are likely to have been searching for the Complainant’s website. Use of the disputed domain name for the purpose of misleading Internet users in this manner does not comprise a bona fide offering of goods and services; see for example, Sodexo v. Li Li, WIPO Case No. D2015-1018.
Turning to the second circumstance, there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable as the Respondent’s website is commercial in character.
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does; see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. In the absence of any response from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The widespread use and distinctive character of the Complainant’s THERMOMIX mark coupled with the confusing similarity to it of the disputed domain name provides a strong indication that Respondent was aware of the Complainant and its mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In the circumstances of this case, the Panel finds the Respondent’s registration of the disputed domain name to have been in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally 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 of its website.
The use to which the Respondent has put the disputed domain name falls within this circumstance in that the Respondent is using the fame of the Complainant’s mark in order to attract Internet users to its website who are likely to assume that from the confusing similarity between the disputed domain name and the Complainant’s mark, that the disputed domain name resolves to a website, operated or authorized by the Complainant, which relates to the Complainant’s Thermomix product. The fact that such users would realize on reaching the Respondent’s website that this is not the case is immaterial because the Respondent will have achieved its objective of attracting them to its website in order to earn advertising or other revenue from such visits; see Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491. The diversion of Internet traffic seeking information about the Complainant’s product to a website containing pornographic content, for the purposes of the Respondent’s financial gain, therefore comprises paradigm bad faith use; see, by way of example, Merck Sharp & Dohme Corp. v. ZhenHui, HuiZhen, WIPO Case No. D2016-1431.
There is no plausible good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, through service of a response to these proceedings or otherwise. Furthermore, the Respondent has sought to conceal its identity through use of a privacy service. These additional factors provide further confirmation of the Respondent’s bad faith.
The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.
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 <othermomix.com> be transferred to the Complainant.
Date: February 4, 2022
1 As explained at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the website to which the disputed domain name resolves, in order to establish the use which is presently being made of it, in addition to confirming the details of the Complainant’s international trade mark registration.