WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg

Case No. D2016-0524

1. The Parties

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

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama (the “First Respondent”) / Martin Mueller of Hamburg, Germany (the “Second Respondent”) / Sonja Kaiserauer of Hamburg, Germany (the “Third Respondent”) / Andrea Goldberg of Groeden, Germany (the “Fourth Respondent”) (collectively the “Respondents”).

2. The Domain Names and Registrar

The disputed domain names <deutschland-thermomix.com>, <thermomix-berlin.com>, <thermomix-gmbh.com>, <thermomix-vorwerk.com>, <thermomix-vorwerk5.com>, <tm5-ag.com>, <tm5-vorwerk.com> and <vorwerk-thermomix-gmbh.com> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 22 and 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants of some of the disputed domain names and providing the contact details and further disclosing registrants and contact information for the remaining disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2016 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 29, 2016.

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 Respondents of the Complaint, and the proceedings commenced on April 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 22, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on April 26, 2016. 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. Consolidation of Proceedings

According to the registrant details provided by the Registrar and the relevant WhoIs records, the ultimate registrants of the disputed domain names and their respective dates of registration are as follows:

<deutschland-thermomix.com>, the Second Respondent, February 18, 2016

<thermomix-gmbh.com>, the Second Respondent, February 14, 2016

<thermomix-berlin.com>, the Second Respondent, February 19, 2016

<thermomix-vorwerk.com>, the Third Respondent, February 25, 2016

<thermomix-vorwerk5.com>, the First Respondent, March 10, 2016

<tm5-ag.com>, the Second Respondent, February 14, 2016

<tm5-vorwerk.com>, the First Respondent, March 9, 2016

<vorwerk-thermomix-gmbh.com>, the Fourth Respondent, March 13, 2016

The Complainant has submitted screen shots of its own website located at “www.thermomix.vorwerk.de” where it promotes its product known as the “Thermomix TM5”. It has also submitted screen shots of the webpages to which each of the disputed domain names resolved on dates between March 3 and 16, 2016. In the case of the disputed domain names <deutschland-thermomix.com>, <thermomix-berlin.com>, <thermomix-vorwerk.com>, <thermomix-vorwerk5.com>, <tm5-vorwerk.com> and <vorwerk-thermomix-gmbh.com>, the webpages resembled the Complainant’s own website and were very similar to one another. In the case of <tm5-ag.com>, similar webpages were located at subdomains resolving to “www.hamburg.tm5-ag.com” and “www.paderborn.tm5-ag.com”. The disputed domain name <thermomix-gmbh.com> resolved to an error page.

The Complainant seeks to consolidate the proceedings in respect of all the disputed domain names despite the fact that the stated identity of the ultimate registrant differs in some cases. Under paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), proceedings against more than one respondent may be consolidated where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. In this case, the Panel is satisfied on the evidence described above that all the disputed domain names are subject to common control (the domain name <thermomix-gmbh.com> having the same ultimate registrant as certain of the other names). Further, in the interests of avoiding a multiplicity of similar complaints, the Panel considers that it would be fair and equitable to all parties to proceed on a consolidated basis.

5. Factual Background

The Complainant is a company incorporated in Switzerland in 1970. It is a subsidiary of a German company, Vorwerk & Co KG, which was founded in 1883 and is part of the Vorwerk Group of companies. It is a supplier of household products including a multifunctional appliance named “Thermomix” which is able to mix ingredients and cook at the same time. The latest version of this appliance is the “Thermomix TM5” which was released in September 2014.

The Complainant is the owner of various registrations for the trademarks THERMOMIX and TM5 which include the following:

- Community Trade Mark number 598910 for THERMOMIX, registered on February 22, 1993 in numerous Classes;

- Community Trade Mark number 003772341 for a figurative mark comprising the name “Thermomix” and a circular blade logo (“the Design”), registered on October 31, 2005 in Classes 11, 16 and 21;

- Community Trade Mark number 14652846 for TM5, registered on February 15, 2016 with a filing date of October 10, 2015, in Classes 7, 11 and 21.

Based on the Panel’s own review, the use of the disputed domain names appears to have changed subsequent to the filing of the Complaint. While the names <deutschland-thermomix.com>, <thermomix-berlin.com>, <thermomix-gmbh.com> and <tm5-ag.com> redirect to an online gaming website, the names <vorwerk-thermomix-gmbh.com> and <thermomix-vorwerk.com> have been suspended and the names <thermomix-vorwerk5.com> and <tm5-vorwerk.com> direct to websites containing pay-per-click (“PPC”) links.

6. Parties’ Contentions

A. Complainant

The Complainant states that it has a presence in 75 countries across Europe, Asia, North and South America and employs over 600,000 people worldwide. It states that its “Thermomix” appliance originated in the early 1970s and is widely sold throughout Europe and elsewhere. In 2014, the Thermomix division of the Complainant’s group achieved sales of EUR 920 million. The “Thermomix TM5” product was launched in September of that year and the Complainant states that the renown and popularity of that product have been widely reported. The Complainant submits press coverage to this effect. The Complainant states that it operates websites linked to domain names including <thermomix.com> and <thermomix.de>. It also provides evidence of its presence including its promotion of the “TM5” product on Facebook and YouTube.

The Complainant submits that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It relies on both registered and unregistered trade mark rights and argues that the term “TM5” has become distinctive of its “Thermomix TM5” product. It submits in this regard that a Google search for the term “TM5” will return results overwhelmingly related to the “Thermomix TM5”. The Complainant argues that each of the disputed domain names reproduces exactly the Complainant’s marks THERMOMIX or TM5 together with geographical terms such as “deutschland” or “berlin”, the name of the Complainant’s company “vorwerk” and corporate abbreviations such as “gmbh” and “ag”. It argues that these generic terms do not diminish the confusing similarity between the disputed domain names and the Complainant’s trademarks.

The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names. It states that it has never licensed the Respondents to use its THERMOMIX or TM5 marks and that the Respondents have not commonly been known by those marks. It also submits that the Respondents are not making any legitimate noncommercial or fair use of the disputed domain names, nor can they demonstrate any use of, or preparations to use the disputed domain names in connection with, any bona fide offering of goods or services. On the contrary, the Complainant alleges that the Respondents have used the disputed domain names in connection with websites which are deliberately designed to give Internet users the false impression that they have reached the Complainant’s official websites and to defraud Internet users.

The Complainant submits that the disputed domain names have been registered and are being used in bad faith.

The Complainant states that its THERMOMIX and TM5 trademarks are well-known and that it must be inferred from the Respondents’ use of the disputed domain names that they registered the names in full knowledge of the Complainant’s rights.

As stated above, the Complainant alleges that the Respondents have used the disputed domain names for the purposes of fraudulent websites. It submits in particular that the websites prominently displayed the Complainant’s trademarks THERMOMIX and TM5 and that they also display the Design in addition to images that have been directly copied from the Complainant’s own websites. The websites had the same “look and feel” as the Complainant’s own websites and there were no disclaimers which indicate that the Respondents’ websites were unconnected with the Complainant. The Complainant alleges that the company information contained on each of the Respondents’ websites was either fictitious or belongs to the Complainant or to unconnected third parties and that the websites included customer reviews which appeared to be false. The Complainant states that the Respondents purported to offer the Complainant’s “TM5” product at a very low price and that customers were likely to be defrauded in that they will make payment by credit card but would never have received their goods. The Complainant submits evidence that a number of the Respondents’ websites have been identified as fraudulent by web-watching agencies and that as soon as the Respondents’ websites have been identified as fraudulent the Respondents register new misleading domain names to continue their activities. The Complainant states that a number of criminal complaints have been instituted against the Respondents.

In the circumstances, the Complainant submits that by using the disputed domain names the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of their websites or of a product on their websites (paragraph 4(b)(iv) of the Policy).

The Complainant states that while the domain name <thermomix-gmbh.com> did not resolve to an active webpage, it is reasonably to be inferred that it was intended to, or at one time did so.

The Complainant also submits that it is likely that the Second, Third and Fourth Respondents are in fact all the same person. It also states that the Second Respondent has engaged in a pattern of registering domain names corresponding to well-known brands including “Apple”, “Galaxy” and “Playstation”.

The Complainant requests a transfer of the disputed domain names.

B. Respondent

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

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case such as this where the Respondents have not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of registered trademark rights for the marks THERMOMIX and TM5. It has also established to the satisfaction of the Panel that by reason of the Complainant’s trading and promotional activities the marks THERMOMIX and TM have become distinctive of the Complainant and its “TM5” product. While the mark TM5 may be considered to be comprised of generic elements, the Panel accepts on the basis of the Complainant’s evidence that it is widely used in commerce to refer to the Complainant’s product and that it is not otherwise prominently used in commerce.

Each of the disputed domain names comprises the whole of one of the Complainant’s marks THERMOMIX or TM5 together with geographical indicators (“berlin” and “deutschland”), the Complainant’s name (“vorwerk”), the number “5” and/or corporate abbreviations (“gmbh” and “ag”). The Panel finds that none of these generic additions is sufficient to distinguish any of the disputed domain names from the Complainant’s trademarks and that the generic Top-Level Domain (“gTLD”), “.com”, is also to be disregarded for the purposes of comparison.

In the circumstances, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has submitted that it has never licensed or permitted the Respondents to use its trademarks THERMOMIX or TM5, that the Respondents have not been commonly known by those trademarks and that the Respondents are not making any legitimate noncommercial or fair use of any of the disputed domain names. The Complainant also submits that, far from using the disputed domain names in respect of any bona fide offering of goods or services, the Respondents were using them misleadingly to divert Internet users to websites which are fraudulent in nature.

The Panel finds that the Complainant’s above submissions give rise to a prima facie case for the Respondents to answer that they have no rights or legitimate interests in respect of the disputed domain names. However, the Respondents have not participated in this proceeding and have not, therefore, submitted any evidence of rights or legitimate interests on their part, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s evidence (which the Respondents have not challenged) that the Respondents have used the disputed domain names for the purposes of websites which impersonated the Complainant’s own websites and were intended to mislead Internet users into believing that they are dealing with the Complainant or its authorized suppliers. In the circumstances the Panel finds that, by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of their websites or of a product on their websites (paragraph 4(b)(iv) of the Policy).

It is also clearly to be inferred from the Respondents’ use of the disputed domain names that they registered the names in the knowledge or anticipation of the Complainant’s trademarks THERMOMIX and TM5 and with the intention of taking unfair advantage of the reputation and goodwill attaching to the Complainant’s said trademarks.

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith and there is nothing in the change of use of the disputed domain names after the filing of the Complaint that alters the Panel’s conclusions in this regard.

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 names <deutschland-thermomix.com>, <thermomix-berlin.com>, <thermomix-gmbh.com>, <thermomix-vorwerk.com>, <thermomix-vorwerk5.com>, <tm5-ag.com>, <tm5-vorwerk.com> and <vorwerk-thermomix-gmbh.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: May 9, 2016