The Complainant is Dell Inc., United States of America (“United States”); VCE Company LLC, United States; and VCE Technology Solutions Ltd., Ireland, represented by Hogan Lovells (Paris) LLP, France.
The Registrant is Name Redacted1. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019, via email. On July 26, 2019, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On July 26, 2019, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details.
The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on August 13, 2019. In accordance with the Rules, paragraph 5.1, the due date for Response was September 10, 2019. The Registrant did not submit any response. Accordingly, the Center notified the Registrant’s default on September 11, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on September 20, 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. Factual Background
The Complainants are three companies within the well-known “Dell Technologies” group, which supplies technology, software, security, and other products and services. The Complainants are collectively referred to below as “the Complainant” unless it is necessary to refer to them separately.
Since at least 2010, the Complainant and its predecessors have supplied infrastructure appliances, storage and server solutions and other high-end solutions for enterprises under the name “VCE”.
The Complainant owns a number of registered trade marks for VCE including European Union trade mark No. 009737644, filed February 15, 2011, registered August 15, 2011, in classes 9, 16, 37, 41 and 42.
The disputed domain name was registered on July 2, 2018.
As of July 23, 2019, the disputed domain name was used for a website branded “VCE Technology Solutions”, which included the Complainant’s own contact details. The site offered personal computers for sale.
The disputed domain name has also been used as a sender email address for emails sent to the Complainant’s suppliers and partners for fraudulent purposes including to obtain the supply of goods on credit. 5. Parties’ Contentions A. Complainant
The disputed domain name is misleadingly similar to the Complainant’s protected identifier “VCE”, which it incorporates in its entirety.
The addition of the descriptive term “technology solutions” does not prevent a finding of misleading similarity with the Complainant’s protected identifier, which remains clearly recognisable within the disputed domain name.
Furthermore, the disputed domain name reflects the registered company name of one of the Complainant companies and the disputed domain name has been used in an effort to mislead the Complainant’s partners and suppliers into thinking that they have been in contact with the Complainant.
The Registrant lacks rights in law or legitimate interests in respect of the disputed domain name.
There is no evidence of demonstrable good faith preparations to use the disputed domain name in connection with a good faith offering of goods or services. On the contrary, the Registrant has used the disputed domain name in an overtly fraudulent manner and has even registered a fake company using the Complainant’s name and obtained a fake VAT number as part of its scheme. Accordingly, the Registrant cannot legitimately advance a claim of rights or legitimate interests.
The disputed domain name has been registered and is being used in bad faith.
It is clear that Registrant registered the disputed domain name with the Complainant in mind as the Registrant has sought to impersonate the Complainant in the furtherance of a fraudulent scheme. The Complainant has never authorised the Registrant to use its trade mark or contact information.
The Registrant has intentionally attempted to attract Internet users to its website by creating confusion with the Complainant’s protected identifier and has therefore used the disputed domain name in bad faith.
The Registrant has also intentionally provided misleading or false information when applying for the disputed domain name. B. Registrant
The Registrant did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith. A. Multiple Complainants
As a preliminary matter, the Panel must address the fact the Complaint has been filed in the names of three Complainants.
At this point it is relevant to refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited,WIPO Case No. DIE2018-0006.
The principles governing the question of whether a complaint may be brought by multiple complainants are set out in section 4.11 of WIPO Overview 3.0.
Applying those principles, the Panel is satisfied that (a) the Complainants have a specific common grievance against the Registrant and that the Registrant has engaged in common conduct that has affected the Complainants in similar fashion, and (b) that it would be equitable and procedurally efficient to permit the consolidation.
In particular, the Complainants are part of the same group of companies. The first Complainant is the parent company; the second Complainant owns relevant registered trade marks; and the third Complainant has been directly targeted by fraudulent conduct referable to the disputed domain name. B. Identical or Misleadingly Similar
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant owns registered trade marks for VCE which have effect in Ireland.
Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive protected identifier is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “technology solutions” is insufficient to avert a finding of misleading similarity.
The country code Top-Level Domain “.ie” ca be disregarded for the purpose of this comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy. C. Rights in Law or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.
Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name.
There is no evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.
As to paragraph 3.1.1 of the IEDR Policy, there is no evidence of any demonstrable good faith preparations to use the disputed domain name for a good faith offering of goods or services or operation of a business. On the contrary, as explained below, the disputed domain name has been used for plainly fraudulent purposes which could not possibly constitute rights in law or legitimate interests.
The Panel therefore finds that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy. D. Registered or Used in Bad Faith
The Complainant has produced evidence clearly indicating that the disputed domain name has been used for a fraudulent scheme which involved impersonating the Complainant and targeting its customers, partners and suppliers.
The disputed domain name was used for a website selling personal computers which was branded “VCE Technology Solutions”, reflecting the corporate name of the third Complainant, and which used the third Complainant’s actual contact details.
Furthermore, the disputed domain name has also been used as the sender address for emails which set out to impersonate the Complainant and defraud its partners and suppliers.
In these circumstances, the Panel has little difficulty in concluding that the disputed domain name was both registered and used in bad faith by the Registrant.
The Panel therefore finds that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the third Complainant2.
Adam Taylor
Sole Panelist
Dated: September 27, 2019
1 The Registrant appears to have used the name and contact details of Complainant when registering the disputed domain name. In light of the apparent identity theft, the Panel has redacted the Registrant’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the IE Domain Registry (IEDR) regarding transfer of the disputed domain name, which includes the name of the Registrant. The Panel has authorized the Center to transmit Annex 1 to IEDR as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
2 The Complainant has not specified which of the three Complainant entities it wishes to receive transfer of the disputed domain name. The Panel has selected the third Complainant because it is an entity incorporated in the Republic of Ireland.
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