The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Contact Privacy Inc. Customer 1241344670, Canada / Enel Business, Enel, Italy. 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 disputed domain name. On May 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 31, 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 June 4, 2021. The Center sent an email communication in English and Italian to the parties on May 31, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Italian. The Complainant submitted a request for English to be the language of the proceeding on June 3, 2021. The Respondent did not comment on the language of the proceeding. 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 in English and Italian of the Complaint, and the proceedings commenced on June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021. The Center appointed Eva Fiammenghi as the sole panelist in this matter on July 6, 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. Enel Group (of which Enel S.p.A. is part) operates through its subsidiaries in more than 32 countries across 4 continents and distributes electricity and gas through a 2.2-million-kilometer network. The Complainant started its business activities, in 2001, in Spain, Canada, the United States of America, and Brazil. Today Enel supplies energy all around the world and sell electricity and gas in many countries on the continent. Enel is also one of the largest energy companies in the Americas, with 71 power generation plants of all types and in South America Enel supplies energy through its subsidiaries to some of the largest cities: Rio de Janeiro, Bogota, Buenos Aires, Santiago, and Lima. The Complainant operates under the trademark ENEL. The Complainant is the owner of several trademark registrations for ENEL, which have been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain name, such us the European Union trademark registration number 000756338 registered on June 25, 1999, and Italian trademark ENEL, Reg. No. 0001299011, registered on June 1, 2010. Enel is the owner of more than 100 domain names containing the trademark ENEL. This disputed domain name The Complainant argues that the disputed domain name is identical and/or confusingly similar to its ENEL, trademark due to the addition to the words “grandi utenti” (which is the Italian term for “large users”) to the trademark in the disputed domain name. The use of the words “grandi utenti” determine an obvious association with the Complainant’s trademarks and does not dispel the likelihood of confusion. The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks. The Complainant requests that the disputed domain name be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Language of proceeding Paragraph 11(a) of the Rules establishes that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement is Italian and the Complainant requested English to be adopted as the language of the proceeding. The Complainant alleged that English is currently the primary language for international relations, that the Respondent uses the English word “business” as part of its name and that the Respondent may have sufficient knowledge of English. Considering these circumstances and the lack of a response by the Respondent, the Panel accepts the Complainant’s request and determines that the language of this proceeding will be English. B. Identical or Confusingly Similar In the present case, the disputed domain name incorporates the word “enel”, which is identical to the Complainant’s registered well-known trademark ENEL. It is clear that the disputed domain name incorporates the ENEL trademark to which the terms “grandi utenti” (“large users” in English) have been added. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727, and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare,WIPO Case No. D2011-2121 “The additional word ‘environment’ following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.”; see also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel therefore concludes that the disputed domain name The Panel finds the first element of the Policy has, therefore, been met. C. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark. The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s ENEL trademark. The Respondent has registered the disputed domain name attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website. The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith The Complainant contends that the Respondent’s registration and use of the disputed domain name is in bad faith, which the Respondent chose not to rebut. The Complainant has demonstrated that the disputed domain name does not lead to any active site. As regards the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding” (Instagram, LLC v. Registration Private, Domains By Proxy, LLC / asd sdasadasdds,WIPO Case No. D2021-1451). In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith. On the basis of the above, noting also the nature of the disputed domain name, the Panel finds that the Respondent registered the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks and domain names with the intention to use it for some illegitimate purpose. Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by the Respondent. On this basis the Panel finds that the Complainant has satisfied the third and last point of the 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 Eva Fiammenghi
Sole Panelist
Date: July 20, 2021
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