Complainant is Enel S.p.A. of Rome, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is Midge Digon of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2015. On August 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2015, 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 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 September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 24, 2015.
The Center appointed Gary J. Nelson as the sole panelist in this matter on October 1, 2015. 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
Complainant is the owner of numerous trademark registrations for ENEL and ENELGREENPOWER in connection with products, services, and solutions in the energy market, inter alia:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
Italy
1299011
ENEL
9, 11, 16, 19, 25, 35, 36, 37, 38, 39, 42
June 1, 2010
European Union
(Community Trademark)
756338
9, 11, 16, 19, 25, 35, 36, 37, 38, 39, 42
June 25, 1999
European Union (Community Trademark)
2575306
1, 37, 42
February 13, 2002
The disputed domain name was created on July 5, 2015. There is no active website associated with this disputed domain name. 5. Parties' Contentions A. Complainant
Complainant is the largest Italian company in the energy and gas markets.
Through Complainant's subsidiaries, it operates in over 30 countries across 4 continents serving 61 million customers worldwide.
In 2014, Complainant posted revenues of approximately EUR 76 billion.
In the field of renewable energy sources, Complainant is one of the global players and oversees Enel Green Power which operates over 9.8 GW of net installed capacity of hydro, wind, geothermal, solar, biomass, and co-generation sources in Europe, the Americas, and Africa.
Enel Green Power operates some 740 plants in 15 countries, in Europe, the American continent, and Africa.
The disputed domain name is confusingly similar to Complainant's ENELGREENPOWER trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a), and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed 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 the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the ENEL and ENELGREENPOWER trademarks and the disputed domain name is confusingly similar to Complainant's ENELGREENPOWER trademark.
Complainant owns numerous ENELGREENPOWER trademark registrations throughout the world.
Accordingly, Complainant has established rights in its ENELGREENPOWER trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.
The disputed domain name is confusingly similar to Complainant's ENELGREENPOWER trademark because the disputed domain name incorporates the entirety of Complainant's ENELGREENPOWER trademark and merely adds a generic Top Level Domain ("gTLD") ".info" suffix.
Neither the addition of a purely descriptive term to a well-known mark nor the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that "[n]either the addition of an ordinary descriptive word […] nor the suffix '.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy, paragraph 4(a)(i) is satisfied).
Accordingly, the addition of the gTLD ".info" suffix directly after Complainant's ENELGREENPOWER trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words "enel," "green", "power," or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where; (1) respondent is not a licensee of the complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its ENELGREENPOWER trademark.
Respondent is maintaining a passive and undeveloped website at the disputed domain name. In this case, Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the dispute domain name. See Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there was no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and respondent was not commonly known by the disputed domain name).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent more likely than not chose the disputed domain name with full knowledge of Complainant's rights in the ENELGREENPOWER trademark. Supporting this conclusion is the fact that Respondent appears to have systematically sent out fraudulent email solicitations directly targeting Complainant's customers, all while masquerading as Complainant. The Panel finds this activity to be conclusive evidence that Respondent registered and is using the disputed domain name in bad faith.
Respondent's awareness of the ENELGREENPOWER trademark may also be inferred because Complainant's ENELGREEN trademark was registered with the United States Patent and Trademark Office prior to Respondent's registration of the disputed domain name, and because the ENELGREENPOWER trademark is widely known. The relevant priority dates for all of Complainant's relevant trademark registrations precede the date upon which the disputed domain name was registered (i.e., July 5, 2015). See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 name be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Date: October 9, 2015
Full & Egal Universal Law Academy