The Complainant is Vorwerk International AG of Wollerau, Switzerland, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Whoisguard Protected, Whoisguard, Inc. of Panama, Panama (“First Respondent”) / Andrea Goldberg of Groeden, Germany (“Second Respondent”) / Martin Mueller of Hamburg, Germany (“Third Respondent”) / Suspended Domains of Florida, United States of America (“United States”) (“Fourth Respondent”) / Angelika Heimann of Kempten, Germany (“Fifth Respondent”).
The disputed domain names <thermo-gmbh.com>, <thermomix-vorwerk.net>, <thermo-vwerk.com>, <tm5-gmbh.com>, <vorwerk-gmbh.com> are registered with eNom, Inc., while the disputed domain name <tm5-lagerverkauf.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrars”).
The disputed domain names <thermo-gmbh.com>, <thermomix-vorwerk.net>, <thermo-vwerk.com>, <tm5-gmbh.com>, <vorwerk-gmbh.com> and <tm5-lagerverkauf.com> shall be collectively referred to as the “Disputed Domain Names”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On June 24, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On June 25, 2016, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com sent an email confirming that the Fifth Respondent is listed as the registrant of the disputed domain name <tm5-lagerverkauf.com> and provided the contact details. On June 28, 2016, the Registrar eNom, Inc., sent an email to the Center providing the underlying names of the remaining registrants as follows:
(i) <thermo-gmbh.com> – Andrea Goldberg (Second Respondent);
(ii) <tm5-gmbh.com> – Andrea Goldberg (Second Respondent);
(iii) <thermomix-vorwerk.net> – Martin Mueller (Third Respondent);
(iv) <thermo-vwerk.com> – Martin Mueller (Third Respondent);
(v) <vorwerk-gmbh.com> – Suspended Domains (Fourth Respondent);
(vi) <tm5-lagerverkauf.com> – Angelika Heimann (Fifth Respondent).
The Center sent an email communication to the Complainant on June 30, 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 July 5, 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 July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 28, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 3, 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.
The Complainant has requested the consolidation of multiple Respondents in respect of all the Disputed Domain Names.
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, all of the Disputed Domain Names resolve to a website that is virtually identical. The First Respondent, the Second Respondent and the Third Respondent were all named as multiple respondents under a separate UDRP proceeding issued by the Complainant (Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg, WIPO Case No. D2016-0524). Three of the Respondents are based in the same country (i.e. Germany), and five of the Disputed Domain Names were registered using the same proxy service provider (i.e. Whoisguard Protected, Whoisguard Inc., the First Respondent). All of the Disputed Domain Names were registered within three months of each other.
Based on the above, the Panel is satisfied that the Disputed Domain Names are subject to common control, and it would be fair and equitable to all parties to proceed with the consolidation.
The Complainant was established in 1970 and is based in Switzerland. Its parent company, Vorwerk & Co. KG was founded in Germany in 1883. The Complainant offers a diverse range of products and services, including high-end household appliances, such as its range of “Thermomix” branded kitchen appliances, as well as vacuum cleaners, water purifiers, carpets, cosmetics and leasing and financial services. The Complainant holds various trade mark registrations worldwide, including international and European Union Trade Mark (“EUTM”) registrations for THERMOMIX, registered on February 22, 1993, VORWERK, registered on August 5, 2002 and TM5, registered on February 15, 2016.
The Respondents registered the Disputed Domain Names as follows:
(i) <thermo-gmbh.com> – was registered on March 17, 2016 by Andrea Goldberg (Second Respondent);
(ii) <tm5-gmbh.com> – was registered on March 17, 2016 by Andrea Goldberg (Second Respondent);
(iii) <thermomix-vorwerk.net> – was registered on April 6, 2016 by Martin Mueller (Third Respondent);
(iv) <thermo-vwerk.com> – was registered on March 18, 2016 by Martin Mueller (Third Respondent);
(v) <vorwerk-gmbh.com> – was registered on March 9, 2016 by Suspended Domains (Fourth Respondent);
(vi) <tm5-lagerverkauf.com> – was registered on May 11, 2016 by Angelika Heimann (Fifth Respondent).
The First Respondent is a proxy service provider, which was used by the Second Respondent, Third Respondent and Fourth Respondent to register the relevant Disputed Domain Names.
The Disputed Domain Names resolve to websites that are virtually identical, and which purport to sell the Complainant’s “Thermomix TM5” products.
The Complainant’s contentions can be summarised as follows:
(a) The Complainant is the owner of the THERMOMIX, VORWERK and TM5 trade mark, including the international and EU registrations, the earliest of which were registered on February 22, 1993, August 5, 2002 and February 15, 2016, respectively.
(b) The Disputed Domain Names are identical or confusingly similar to the Complainant’s THERMOMIX, VORWERK and TM5 trade marks. The only difference between some of the Disputed Domain Names and the Complainant’s marks is the addition of either “-gmbh” or “-lagerverkauf”. The word “gmbh” is a common corporate abbreviation, and the word “lagerverkauf” is a generic German term meaning “outlet” or “wholesale” in English. These generic words do not sufficiently distinguish the Disputed Domain Names from the Complainant’s THERMOMIX, VORWERK and TM5 trade marks. In addition, the Disputed Domain Name <thermo-vwerk.com> incorporates the Complainant’s VORWERK trade mark, save for the deliberate omission of the letters “o” and “r”.
(c) The Complainant has not licensed or otherwise permitted the Respondents to use any of its THERMOMIX, VORWERK and TM5 trade marks, and there is no evidence to show that the Respondents are commonly known by the Disputed Domain Names. The Respondents are using the Disputed Domain Names to purportedly sell the Complainant’s “Thermomix TM5” products, (which is false as the products do not seem to be delivered) and the Respondents are instead defrauding customers who attempt to purchase them. Therefore, the Respondents are not using the Disputed Domain Names for a bona fide offering of goods or services, and the Respondents are not making a legitimate non-commercial or fair use of the Disputed Domain Names.
(d) The Respondents must have had registered the Disputed Domain Names in full knowledge of the Complainant and its THERMOMIX, VORWERK and TM5 trade marks. The Complainant’s trade marks are distinctive and well-known worldwide. The websites to which the Disputed Domain Names resolve are allegedly offering the Complainant’s “Thermomix TM5” products for sale, which indicates that the Respondents were clearly aware of the Complainant at the time they registered the Disputed Domain Names. The websites also display the Complainant’s THERMOMIX trade mark and have the same look and feel as the Complainant’s official websites (e.g. using the same white and green colours and copying text and images from the Complainant’s website). The Respondents therefore registered and are using the Disputed Domain Names in order to mislead Internet users into believing that the websites to which the Disputed Domain Names resolve are affiliated with the Complainant. The Respondents were using the Disputed Domain Names to deceive customers into purchasing products from the Respondents’ website, without ever delivering any products.
(e) The Respondents appear to have registered the Disputed Domain Names using fictitious names and false contact details to conceal their identity and cover up their fraudulent activities. With regard to the Disputed Domain Name <tm5-lagerverkauf.com>, the Fifth Respondent lists her address as Kempten in Nordrhein-Westfalen, which does not exist in Germany. In relation to <vorwerk-gmbh.com>, the Fourth Respondent’s address and phone number are incomplete or false.
The Respondents did not reply to the Complainant’s contentions.
The fact that the Respondents have not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondents to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondents in bad faith.
The Panel accepts that the Complainant has rights in the THERMOMIX trade mark, the VORWERK trade mark and the TM5 trade mark, based on its EU and international trade mark registrations.
The Disputed Domain Names <tm5-gmbh.com>, <thermomix-vorwerk.net>, <vorwerk-gmbh.com> and <tm5-lagerverkauf.com> incorporate the Complainant’s THERMOMIX, VORWERK or TM5 trade marks in their entirety. The Disputed Domain Names <thermo-gmbh.com> and <thermo-vwerk.com> are confusingly similar to the Complainants THERMOMIX or VORWERK trade marks.
The Disputed Domain Name <thermo-vwerk.com> appears to contain an obvious misspelling of the Complainant’s VORWERK mark, as it misses out the letters “o” and “r”. This “typosquatting” creates a confusing similarity to the Complainant’s trade mark under paragraph 4(a)(i) of the Policy (see, for example, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775).
The only difference between some of the Disputed Domain Names and the Complainant’s marks is the addition of either “-gmbh” or “-lagerverkauf”. The word “gmbh” is a common corporate abbreviation, whereas the word “lagerverkauf” is a generic German term, which means “outlet” or “wholesale” in English. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel finds that “tm5”, “thermomix”, “vorwerk” or “thermo” are the distinctive component of the Disputed Domain Names <tm5-gmbh.com>, <thermomix-vorwerk.net>, <vorwerk-gmbh.com>, <tm5-lagerverkauf.com> and <thermo-gmbh>, and the addition of “-gmbh” or “-lagerverkauf” does nothing to distinguish them from the Complainant’s trade marks.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extensions, in this case “.com” and “.net”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the THERMOMIX trade mark, the VORWERK trade mark and the TM5 trade mark before the Disputed Domain Names were registered and the Complainant has never authorised the Respondents to use its trade marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondents to demonstrate that they have rights or legitimate interests in the Disputed Domain Names. As the Respondents have not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondents’ use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the Disputed Domain Names, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondents have not provided any evidence to demonstrate that they have become commonly known by the Disputed Domain Names, or a name corresponding to them.
The Disputed Domain Names resolve to websites (“Respondents’ Websites”) that are virtually identical which purport to sell the Complainant’s “Themomix T5” products. The Complainant contends that the Respondents are not a reseller of any of the Complainant’s products, and are instead defrauding customers who attempt to purchase them. The Respondents’ Websites falsely lead Internet users to believe that they have reached one of the Complainant’s official websites, as they have the same look and feel as the Complainant’s website, they incorporate the Complainant’s trade marks and also appear to contain images taken from the Complainant’s website without displaying any disclaimer. In light of the foregoing, the Respondents cannot be said to be using the Disputed Domain Names to make a bona fide offering of goods, or for any legitimate noncommercial or fair use.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondents knew of the Complainant and the Complainant’s THERMOMIX, VORWERK or TM5 trade marks at the time they registered the Disputed Domain Names, and registered and used the Disputed Domain Names in bad faith, based on the following:
(a) the Respondents registered the Disputed Domain Names in March, April and May 2016, more than 23 years after the Complainant first obtained its international registration for the THERMOMIX trade mark; and 14 years after the Complainant first obtained its EU registration for the VORWERK trade mark; and about a month after the Complainant first obtained its EU registration for the TM5 trade mark;
(b) the Respondents’ Websites feature the Complainant’s THERMOMIX and TM5 trade marks, and have the same look and feel of the Complainant’s website;
(c) the Respondents’ Websites incorporate some images that are identical to those which appear on the Complainant’s website;
(d) the Respondents’ Websites are purporting to sell the Complainant’s “Thermomix TM5” products, which is false as the products do not seem to be delivered;
(e) the Second Respondent and Fifth Respondent appear to have registered their respective Disputed Domain Names using incorrect contact details (i.e. the Fifth Respondent lists her address as Kempten in Nordrhein-Westfalen, which does not exist in Germany, and the Fourth Respondent’s address and phone number are incomplete or false); and
(f) the First Respondent, the Second Respondent and the Third Respondent were all named as multiple respondents under a separate UDRP proceeding issued by the Complainant, which was determined in favour of the Complainant on May 9, 2016 (Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg, supra). The Disputed Domain Names <thermo-gmbh.com> and <tm5-gmbh.com> were registered by the Second Respondent (via the First Respondent) on March 17, 2016, and the Disputed Domain Name <thermo-vwerk.com> was registered by the Third Respondent (via the First Respondent) on March 18, 2016, which was one day and two days (respectively) after the Complaint in the aforementioned case was allegedly filed. The Disputed Domain Name <tm5-lagerverkauf.com> was also registered on May 11, 2016, shortly after the decision was rendered.
Based on the above, the Panel reasonably believes that the Respondents registered and are using the Disputed Domain Names with the intent of trading on the reputation of the Complainant’s THERMOMIX, TM5 and VORWERK trade marks to intentionally attempt to attract Internet users to the Respondents’ Websites, by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ Websites, for commercial gain in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <thermo-gmbh.com>, <thermomix-vorwerk.net>, <thermo-vwerk.com>, <tm5-gmbh.com>, <tm5-lagerverkauf.com> and <vorwerk-gmbh.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: August 17, 2016