The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Ginno Zavala, Peru. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2021 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 May 27, 2021. 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 Respondent of the Complaint, and the proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on July 5, 2021. 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 Complainant is one of the largest Italian companies in the energy market. The Complainant owns numerous trademark registrations in several jurisdictions, such as the following ones: - Italian registration No. 1299011 for the mark Enel (word and design), registered on June 1, 2010; - Italian registration No. 825734 for the mark Enel (word and design), registered on October 4, 2000; - European Union Trade Mark registration No. 15052152 for the mark Enel (word and design), registered on February 18, 2021. The Domain Name was registered on December 10, 2020. The Domain Name does not direct to any active websites. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: The Complainant contends that it is the largest Italian company in the energy market. The Complainant claims that it is the owner of more than 100 domain names containing the trademark ENEL. The Complainant submits that it owns numerous trademark registrations for the ENEL mark in several jurisdictions. The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s ENEL trademark. The Complainant claims that the Domain Name incorporates the Complainant’s ENEL trademark in its entirety. The Complainant contends that neither the addition of the term “supplier”, nor addition of the term “day” is sufficient to avoid finding of confusing similarity. The Complainant argues that the inclusion of the words “supplier” and “day” exacerbates the confusion because the Complainant holds a supplier digital day. The Complainant contends that the applicable generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test. The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name because of the following reasons: 1) the Complainant has not authorized or otherwise permitted the Respondent to use any of its trademarks or to register and use a domain name incorporating its ENEL trademark; 2) the Domain Name does not resolve to any active websites; 3) before any notice to the Respondent of this dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services; 4) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, as the Domain Name points merely to an inactive website. The Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because (i) in registering the Domain Name, the Respondent had knowledge or exercised a willful blindness of the Complainant’s earlier rights in and to the trademark and trade name ENEL; (ii) the Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s trademark ENEL and depriving the Complainant of the possibility to register the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the 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 Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns several trademark registrations for the ENEL trademark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.2 Here, the Domain Name consists of the Complainant’s ENEL trademark, the terms “supplier” and “day”, and the gTLD “.com”. Because the Complainant’s ENEL trademark is recognizable within the Domain Name, neither the inclusion of the words “supplier” and “day”, nor the gTLD “.com”, prevents a finding of confusing similarity. Therefore, the Domain Name is confusingly similar to the Complainant’s ENEL trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following: (i) before any notice of the dispute, the 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the 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. To prove the second UDRP element, the Complainant must make out a prima facie case3 in respect of the lack of rights or legitimate interests of the Respondent. The Complainant submitted evidence that shows that the Respondent has not been commonly known by the Domain Name. The Respondent has not had a permission or authorization from the Complainant to use the Complainant’s trademark in the Domain Name. Nor has the Respondent used the Domain Name in connection with a bona fide offering of goods or services because the Respondent has been passively holding the Domain Name. See, e.g., Bayerische Motoren Werke AG v. David Weiss, Weiss Ent, WIPO Case No. D2017-2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”). Therefore, the Complainant has made out the prima facie case4in respect of the lack of rights or legitimate interests of the Respondent, so the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name, has shifted to the Respondent. The Respondent has failed to present any rebutting evidence, so the Panel concludes that the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the UDRP provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. It is well-established that non-use of a domain name would not prevent a finding of bad faith under certain circumstances.5 The following circumstances have been considered relevant in applying the passive holding doctrine include, inter alia: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; and (iii) the implausibility of any good faith use to which the domain name may be put. All of those circumstances are present in this case. The Complainant’s mark is distinctive and previous panels found it to be well-known6. The Respondent failed to submit a response or to provide any evidence of actual or contemplated good faith use of the Domain Names. In the Panel’s view, any good faith use of the Domain Names is implausible. The Complainant contends that the Respondent registered the Domain Name to prevent the Complainant from reflecting its trademarks in the corresponding Domain Name. While it is difficult to predict how the Respondent planned on using the Domain Name, the Panel finds it likely that the Respondent’s intention was to use the Domain Name to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy) or take unfair advantage of or otherwise abuse the Complainant’s mark. In view of the above, the Panels finds that the Domain Name was registered and is being used in bad faith. The Complainant satisfied the third element of the UDRP. 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 Domain Name Olga Zalomiy 1 Section 1.8., WIPO Overview 3.0. 1 Section 1.11.1, WIPO Overview 3.0. 3 Section 2.1, WIPO Overview 3.0. 4 Id. 5 Section 3.3, WIPO Overview 3.0. 6 Enel S.p.A. v. Lucky Graziano, enel.website,WIPO Case No. D2021-1014
Sole Panelist
Date: July 19, 2021
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