Complainant is Vorwerk International AG, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Name Redacted1 .
The disputed domain name <mixthermoshop.com> (the “Domain Name”) is registered with Register SPA (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center sent an email communication in English and Italian to the parties on July 16, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Domain Name is Italian. Complainant submitted a request for English to be the language of the proceeding on July 17, 2020. Respondent did not comment on the language of the proceeding.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. Respondent sent an email communication on August 5, 2020. The Center notified the Commencement of Panel Appointment Process on August 12, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on August 19, 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.
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The paragraph also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Registrar’s Registration Agreement is made available in Italian. Notwithstanding the Registration Agreement being in Italian, Complainant requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainant:
- the Domain Name includes an English-language term, namely the word “shop”;
- the Domain Name resolves to a website (the “Website”) with text written in German, not Italian, which supports that Respondent may communicate in languages other than Italian;
- Complainant’s primary operational language is German, while Complainant’s representatives’ primary operational language is English; and
- requiring Complainant to translate the Complaint and annexes in Italian would involve further cost and delay.
Furthermore, Respondent has been given an opportunity to object to the language of the proceedings being English, through the submission of pleadings to the Complaint but has chosen not to do so. On the contrary, Respondent submitted on August 5, 2020 email communications to the Center, which contains text in Italian and English.
In view of all these circumstances, the Panel accepts Complainant’s request and determines that the language of this proceeding will be English (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.5.1 and 4.5.2, Laverana GmbH & Co. KG v. Silkewang, Jiangsu Yun Lin Culture Communication Co., Ltd. / xia men yi ming wang luo you xian gong si, WIPO Case No. D2016-0721; eBay Inc. v. NicSoft, Antonio Francesco Tedesco, WIPO Case No. D2014-0812).
On August 5, 2020, the Center received a communication from a natural entity claiming to be the legal representative of Respondent, stating that that company is seated at Via Madonna del Carmine no 49 and not 69, as mentioned in the Website, and with VAT number, the one mentioned in the Website, but with different email address, phone numbers and bank account details to those mentioned in the Website and that it has been the victim of identity theft, providing also a copy of the penal claim filed against unknown third parties with State Police – Postal Police Section of Isernia on July 30, 2020 and the filing receipt of the same. In the August 5, 2020 communication to the Center, Respondent claimed that the registration of the Domain Name was made without its knowledge or authorization by a third party using its identity.
The Panel takes note of all the above and of the fact that the UDRP Rules provide that Respondent in a proceeding is the registered holder of a domain name registration against which a Complaint is initiated. The registrant on record in the present case is also the listed registrant in the WhoIs data and the named Respondent in the Complaint.
Given that the listed registrant and named Respondent coincide, the Panel shall proceed with the examination of the Complaint.
Complainant, a company incorporated in 1970 and based in Switzerland, is a subsidiary of Vorwerk & Co. KG, founded in Wuppertal, Germany, in 1883. Complainant’s group is an international corporate group with a diverse portfolio of products and services, including high-end household appliances such as kitchen appliances. Complainant’s group is present in over 80 countries across Europe, Asia, North and South America, as well as Australia and parts of Africa, employing over 600,000 people worldwide.
Complainant’s line of kitchen appliances includes the Thermomix device, which accounts for 43% of Complainant’s group sales. In 2019, Complainant’s group revenue from Thermomix reached EUR 1.26 billion. Thermomix is a multifunctional kitchen appliance with over twenty kitchen appliances combined in a single unit. The idea of the Thermomix device has its origins in France in 1970. The Thermomix VM 2000 was launched in 1971, first in France, and then in Spain and Italy. Since then, Complainant has throughout developed different Thermomix models, the latest one being released in 2019 as Thermomix TM 6. Complainant’s Thermomix products are sold through inter alia Complainant’s website at “www.thermomix.com”. As Complainant has demonstrated, Complainant’s Thermomix products have acquired considerable reputation, including in Italy.
Complainant is the owner of a number of THERMOMIX trademarks in jurisdictions throughout the world, including:
- European Union Trade Mark registration No. 003772341, THERMOMIX (logo), filed on April 16, 2004, registered on October 31, 2005, for goods in international classes 9, 16 and 31; and
- United States trademark registration No. 4762314, THERMOMIX (word), registered on June 30, 2015, for goods and services in international classes 7, 8, 9, 11, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 37 and 41.
Complainant (either itself or through members of its corporate group), is the owner of a number of domain names consisting of or including the word THERMOMIX, including thermomix.com registered on December 6, 1997.
The Domain Name was registered on August 19, 2019 and resolved to the Website, with text in German, titled “Mixthermo Shop”, stating that the Website is “Powered by Mix Thermo Shop”, reproducing copyrighted photographs of the Thermomix product of Complainant bearing Complainant’s trademarks, taken from Complainant’s official website. The Website reproduced the same green-and-white colour scheme used by Complainant on its official website at “www.thermomix.com”, making direct reference to Complainant and purporting to offer Complainant’s Thermomix TM 6 product for sale at a discounted price. Per Complaint, payment for the goods advertised therein was only possible by direct transfer to an Italian bank account. The Website bore no disclaimer or any other form of notice clarifying its lack of relationship with Complainant and included no privacy policy. The Website provided a contact address that is slightly altered to the address of seat of the company of Respondent. Namely the contact address on the Website of Via Madonna del Carmine, 69-, 81058 Vairano Patenora (CE), Italy, appeared, per Complainant, to correspond to a residential address. As Complainant demonstrated, online reports from German-speaking consumers indicated that the Website is a fake online shop.
The Domain Name currently, following the filing of the Complaint, resolves to an inactive website.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not formally reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Name incorporates Complainant’s trademark THERMOMIX, namely both its components, “Thermo” and “Mix” reversed, in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). Both components of Complainant’s trademark, namely THERMO and MIX, remain recognizable within the Domain Name (WIPO Overview 3.0, section 1.7, Instagram, LLC v. Zhou Murong, WIPO Case No. D2014-1550).
The addition of the dictionary word “shop” at the end of the Domain Name does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s trademark (WIPO Overview 3.0, section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the THERMOMIX mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved to the Website, which reproduced the trademarks, graphics and layouts of Complainant’s official website “www.thermomix.com”.
Per Complainant, Respondent is not an affiliated entity or an authorized distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the website of Respondent.
The use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; WIPO Overview 3.0, section 2.8).
Furthermore, as demonstrated by Complainant, consumer reports on the Internet indicate that the Website was a fake online shop.
The use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13, Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Andrea Goldberg / Martin Mueller / Suspended Domains / Angelika Heimann, WIPO Case No. D2016-1285).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s THERMOMIX trademark enjoys reputation (Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg, WIPO Case No. D2016-0524). Because the THERMOMIX mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also in view of the content of the Website which made direct reference to Complainant, its copyrighted images from Complainant’s official website, and reports by consumers of it being a fake web shop purportedly selling Complainant’s products.
As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, which prominently displayed Complainant’s registered logos and official website layout, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorized dealer of Complainant. The Domain Name operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use (Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and WIPO Overview 3.0, section 3.3 and 3.4).
The Panel takes the following into account: (a) the Website did not list any contact phone number, (b) it did not contain any privacy policy, (c) it was aimed towards German-speaking consumers, when the physical contact address listed appeared to correspond to a residential address in Italy, (d) payments were only possible by direct transfer to an Italian bank account and (e) consumer reports on the internet indicated that it was a fake online shop targeting customers of Complainant.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mixthermoshop.com> be transferred to Complainant.
Marina Perraki
Sole Panelist
Date: September 2, 2020
1 The Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this Decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.