WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. Pons Nicolas / Carrouget Christophe

Case No. D2019-1793

1. The Parties

The Complainant is Dell Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Pons Nicolas / Carrouget Christophe, France.

2. The Domain Names and Registrar

The disputed domain names <dell-development.com> and <dell-montpellier.com> are registered with Ligne Web Services SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <dell-development.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On that same day, the Center sent an email communication to the parties in English and French indicating the language of the registration agreement is French, and inviting them to submit their comments as to the language of the proceeding. The Complainant requested English to be the language of the proceeding on July 30, 2019, and filed an amended Complaint on August 1, 2019. The Respondent did not submit any comments.

On August 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <dell-montpellier.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on August 9, 2019.

On August 16, 2019, the Center sent an email to the Parties regarding the consolidation.

The Center verified that the Complaint together with the amended Complaints 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 August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019.

The Center appointed Marina Perraki as the sole panelist in this matter on September 11, 2019. 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. Procedural issue: Complaint filed against Multiple Respondents / Consolidation

The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

The Panel notes the following features of the Domain Names and arguments submitted by Complainant in favor of the consolidation:

- both Domain Names have been used to create email addresses impersonating Complainant employees in the Montpellier area of France in order to carry out a fraudulent scheme;

- both Domain Names redirect to official websites of Complainant;

- the Domain Names share the same naming pattern, namely they reproduce the trademark DELL of Complainant, in combination with a hyphen (-), and an additional term and the generic Top-Level Domain (gTLD) ".com";

- the Domain Names were registered under privacy through the same Registrar, namely Ligne Web

Services SARL;

- the Domain Names were registered within one month, namely between May and June 2019;

- both named Respondents’ details include details corresponding to employees of Complainant, who have confirmed that their identities have been used without their authorization;

- both named Respondents’ contact information show an email address that includes “@outlook.com”, namely “phaxaxeja4@outlook.com” for the first Domain Name <dell-development.com> and “TOLPI2@outlook.com” for the second Domain Name <dell-montpellier.com>.

Considering all the above, the Panel notes that, as Complainant has argued, there appears prima facie to be one single Respondent, providing fake ID details. Furthermore, named Respondents did not submit any arguments to rebut this inference.

The Panel finds therefore that consolidation is fair to both Parties, as Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint but have chosen not to respond (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302).

5. Procedural issue: Language of the proceedings

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 French. Notwithstanding the Registration Agreement being in French, Complainant requested that English be adopted as the language of the present proceeding. The Panel considers the following assertions of Complainant:

- Complainant is a United States corporation, with English as its principal operational language;

- the Domain Names have been used in connection with a fraudulent scheme in which Respondent has impersonated employees of Complainant; and

- requiring Complainant to translate the Complaint and annexes in French would involve further cost and delay.

Furthermore, Respondents have been given an opportunity to object to the language of the proceedings being English through the submission of pleadings to the Complaint but have chosen not to respond.

The Panel accepts Complainant’s request and determines that the language of this proceeding will be English (see 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).

6. Factual Background

According to the Complaint, Complainant was founded in 1984 by Michael Dell and has since become a world leader in computers, computer accessories and other computer-related products and services. Complainant has also developed a family of businesses, collectively known as Dell Technologies that offers products and services related to technology, software, security and more. Complainant has invested heavily in marketing its products, devoting hundreds of millions to advertising through various media in many countries, including television, radio, print media, social media and the Internet. Per Complaint, Complainant has developed considerable reputation and goodwill worldwide in both its services and goods. In 2019, Complainant ranked 35th in the annual Fortune 500 rankings and 67th in Brand Finance's Global 500 Most Valuable Brands of 2019. Complainant sells its products and services in over 180 countries around the world, generating over USD 91 billion in revenue in the fiscal year of 2019.

Complainant holds numerous trademark registrations consisting of or including the word DELL, such as:

- the United States trademark registration No. 1860272, DELL (figurative), filed on February 27, 1992 and registered on October 25, 1994, for goods in international class 9;
- the United States trademark registration No. 2236785, DELL (word), filed on March 19, 1998 and registered on April 6,1999, for services in international class 40;
- the European Union trademark registration No. 000083295, DELL (word), filed on April 4, 1996 and registered on August 6,1998, for goods in international classes 9 and 16;
- the International trademark registration No. 972757, DELL (figurative) registered on October 22, 2007, for goods and services in international classes 2, 9, 36, 37 and 42; and
- the International trademark registration No. 1005367, DELL (figurative) registered on June 2, 2009, for goods and services in international classes 9, 16, 25, 35, 36, 37, 38, 40, 41 and 42.

Per Complaint, Complainant’s DELL trademark has been continuously and extensively used since 1987 in connection with Complainant’s IT products and services, having acquired considerable goodwill and renown worldwide.

Complainant is also the owner of numerous domain names consisting of or including the word DELL. Inter alia, Complainant is the owner of the domain name “dell.com” registered on November 22, 1998 and “dellemc.com” registered on February 17, 2007, from which it operates its official websites at “www.dell.com” and “www.dellemc.com” respectively.

The first Domain Name <dell-development.com> was registered on June 26, 2019. The second Domain Name <dell-montpellier.com> was registered on May 24, 2019.

Both Domain Names were used to impersonate employees of Complainant in a fraudulent scheme.

The first Domain Name <dell-development.com> was used to create an email address appearing as the email address of one of the managers of Complainant’s subsidiary Dell EMC in Montpellier, France. This email address and personal details were used to advertise an electric guitar for sale on the e-commerce website “leboncoin.fr”. The second Domain Name <dell-montpellier.com> was used to create an email address appearing as the email address of one of the managers of Complainant in Montpellier, France. This employee received reports from consumers attempting to purchase items advertised for sale on “leboncoin.fr” that had never been delivered, even though consumers had made the payment for the advertised goods. The first Domain Name <dell-development.com> redirected to Complainant's official website at “www.dell.com/fr-fr”. The second Domain Name <dell-montpellier.com> redirected to the website of Complainant's subsidiary Dell EMC, specialized in data storage, data security, virtualization, analytics, cloud computing and other products, at “https://www.dellemc.com/fr-fr/index.htm”. The two Complainant’s employees have filed criminal proceedings.

7. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

8. Discussion and Findings

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.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the DELL mark.

The Panel finds that the first Domain Name <dell-development.com> is confusingly similar to the DELL trademark of Complainant.

The first Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The word “development” which is added in the Domain Name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term (see Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135 and WIPO Overview 3.0, section 1.8).

The hyphen “-“ between the first word “dell” and the second word “development” in the “dell-development” portion of the first Domain Name is immaterial for the purpose of comparison (see Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the first Domain Name <dell-development.com> is confusingly similar to the DELL mark of Complainant.

The second Domain Name <dell-montpellier.com> incorporates the DELL trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The word “montpellier” which is added in the Domain Name is disregarded as it is a geographic, non-distinctive term (see BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284, Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).

The hyphen “-“ between the first word “dell” and the second word “montpellier” in the “dell-montpellier” portion of the second Domain Name is immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the second Domain Name <dell-montpellier.com> is confusingly similar to the DELL mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

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 you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, 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 Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute.

Complainant demonstrated that Respondent used the Domain Names for the purpose of initiating a fraudulent scheme, namely to send fraudulent emails impersonating employees of Complainant for the only purpose of a scam. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (see L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133; Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).

Furthermore, as Complainant demonstrated, the Domain Names redirected users to Complainant’s / Complainant’s affiliate’s websites. A respondent’s use of a complainant’s mark to redirect users would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).

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).

C. Registered and Used in Bad Faith

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 Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names 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 Names; or

(ii) that Respondent has registered the Domain Names 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 Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, 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 Names in bad faith.

Because the DELL mark is so well-known and had been widely used since 1987 and registered at the time of the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (see Dell Inc. v. ASTDomains, WIPO Case No. D2007-1819, 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).

Furthermore, the Domain Names incorporate in whole Complainant’s mark plus an additional non distinctive term and a hyphen, therefore creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names.

Lastly, it is apparent that Respondent was aware of Complainant and Complainant’s mark DELL when registering the Domain Names. As Complainant demonstrated, Respondent used the Domain Names to create email addresses and use them for impersonating Complainant’s employees (see Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, supra).

The redirection of the Domain Names to Complainant’s / Complainant’s affiliate’s website also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (see Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).

As regards bad faith use, Complainant demonstrated that the Domain Names were each used to create an email address appearing as an email address of an employee of Complainant. The first Domain Name was used to advertise, through use of the respective email address, an electric guitar for sale on the e-commerce website “leboncoin.fr”. The second Domain Name <dell-montpellier.com> was used to create an email address and send emails to consumers attempting to purchase items advertised for sale on the website “leboncoin.fr” which were not delivered despite the fact that consumers had made the payment. Use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (see WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (see Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213; Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc. / GREYHAT SERVICES, WIPO Case No. D2016-0385; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v. Cimpress Schweiz GmbH,WIPOCaseNo. DCO2017-0021;Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., supra; Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; La Française des Jeux v. Michael E Wilkins, WIPO Case No. D2009-0898; and WIPO Overview 3.0, sections 3.3 and 3.4).

The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, (iii) the implausibility of any good faith use to which the Domain Names may conceivably be put, given that as Complainant has demonstrated they were both used to create email addresses for impersonating Complainant employees, while the domain portion of such emails redirected, in order to enhance the appearance that they were authentic, as regards the first Domain Name <dell-development.com> to Complainant’ s official website and as regards the second Domain Name <dell-montpellier.com> to the website of Complainant's subsidiary Dell EMC.

Under these circumstances and on this record, the Panel finds that Respondent registered and was using the Domain Names in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

9. 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 <dell-development.com> and <dell-montpellier.com> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: September 25, 2019