The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Lucas Oliveira, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 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 July 13, 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 July 16, 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 July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021.
The Respondent sent emails on August 9, August 22, August 26, September 13, and September 14, 2021, but did not submit any formal Response. The Center informed the Parties of its commencement of the Panel Appointment process on October 6, 2021.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 12, 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 BackgroundThe Complainant, Enel S.p.A., is an Italian company in the energy business, serving more than 26 million Italian customers.
The Complainant is the parent company of the Enel Group, which operates through its subsidiaries in more than 32 countries across 4 continents, bringing energy to over 64 million customers.
In 2020, the Complainant was ranked 87th in the Fortune Global 500 List of the Fortune Magazine.
The Complainant owns several trademark registrations for ENEL across the world, among which are the following:
Trademark
No. Registration
Jurisdiction
Date of Registration
International Classes
ENEL
908118341
Brazil
January 31, 2017
42
ENEL
908118201
Brazil
January 31, 2017
35
ENEL
1299011
Italy
June 1, 2010
9, 11, 16, 19, 25, 35, 36, 37, 38, 39, 42
ENEL
15052152
European Union
May 13, 2016
4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41, 42
ENEL
1322301
International Registration
February 4, 2016
4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41, 42
The Complainant is the owner of over 100 domain names, among them
The disputed domain name was registered on May 11, 2021, and resolved to a parked page, being currently inactive.
5. Parties’ Contentions A. Complainant I. Identical or Confusingly SimilarThat the Complaint is based on the prior rights that the Complainant has over the ENEL trademark in Italy and many other countries.
That numerous panels appointed under the Policy have found that a domain name is identical or confusingly similar to a company’s name and trademark when, as in this case, the domain name incorporates said name and trademark completely.
That, when confronting the trademark ENEL with the disputed domain name, Internet users and consumers will inevitably focus their attention on the term “enel”, and associate it with the Complainant’s well-known trademark ENEL.
That the Complainant has demonstrated that the disputed domain name is identical to the Complainant’s trademark ENEL.
II. Rights or Legitimate InterestsThat the Complainant has neither authorized nor given consent to the Respondent to register and use the disputed domain name.
That the disputed domain name has been registered and is being used to exploit the reputation of the Complainant’s trademark ENEL, to attract current and potential clients of the Complainant.
That the disputed domain name resolves to a parked website with no specific content.
That the Complainant noted that there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection to a bona fide offering of goods and services.
That the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain, as the disputed domain name resolves to an inactive website. That there is no evidence that the passive holding of the disputed domain name constitutes a bona fide offering of goods and services, nor a demonstrable preparation of such offering.
III. Registered and Used in Bad FaithThat the Respondent does not have any rights to or legitimate interests in the disputed domain name, which fully reproduces the Complainant’s well-known trademark ENEL, and which also corresponds to the Complainant’s company name.
That the disputed domain name was registered in bad faith due to the following circumstances:
- That there is no connection between the Respondent and the Complainant’s ENEL trademarks.
- That the disputed domain name is not used in good faith for the offering of goods and/or services, nor is it used for legitimate commercial or noncommercial use, without the intention of misleading the Complainant’s customers, or infringing the ENEL trademarks.
- That ENEL is not a common or descriptive term; that it is rather a trademark to which the Complainant has demonstrated to have prior rights.
- That due to the Complainant’s intensive use of the trademark ENEL, it has become well known.
- That the disputed domain name reproduces the Complainant’s trademark, without authorization or approval, which trademark is the only component of the disputed domain name.
That in registering the disputed domain name, the Respondent had knowledge of, or willful blindness to the Complainant’s prior rights to the ENEL trademark.
That the Respondent is unfairly and intentionally taking advantage of the reputation and distinctiveness of the Complainant’s trademark ENEL, to attract Internet users to the website to which the disputed domain name resolves.
B. RespondentThe Respondent sent an email communication in Portuguese to the Center on August 9, 2021, apparently alleging that the disputed domain name had been deleted. However, the WhoIs data related to the disputed domain name indicates that the disputed domain name is still being held by the Respondent.
On August 22, 2021, a new email communication in Portuguese was sent by the Respondent to the Center, asking how to delete the disputed domain name, as well as stating one more time that the Respondent had thought that the disputed domain name had been deleted.
On August 26, 2021, September 13, 2021, and finally, on September 14, 2021, the Respondent sent other email communications in Portuguese to the Center, repeating that the disputed domain name had been deleted, and claiming that the Respondent had no interest in using the disputed domain name.
The Respondent did not submit a Response that satisfies the formal and substantive requirements of the Policy and the Rules.
6. Discussion and FindingsIn accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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.
Given the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations, in accordance with paragraphs 5(f), 14(a), and 15(a) of the Rules, (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292).
A. Identical or Confusingly SimilarThe Complainant has proven to be the owner of registrations for the trademark ENEL throughout the world, including Brazil, where the Respondent declared to have his domicile.
The disputed domain name
The addition of the generic Top-Level Domain (“gTLD”) “.host” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Thus, it has no legal significance in assessing identity or confusing similarity in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).
In light of the above, the first element of the Policy has been met.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it did not acquire trademark or service mark rights;
or (iii) the respondent is making a legitimate non-commercial 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.
This Panel considers that the Complainant has submitted enough evidence to prove that the ENEL trademark is well known. Also, the Panel agrees with the determinations reached in Enel S.p.A. v. Antonio of Santis, ANTONIO DE SANTIS,WIPO Case No. D2021-1260, and Enel S.p.A. v. Lucky Graziano, enel.website,WIPO Case No. D2021-1014, in that the ENEL trademark is well known.
The Complainant has asserted that there is no connection between the Complainant and the Respondent, that it has not authorized nor given consent to the Respondent to register the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondent did not contest these allegations.
The case file contains no evidence that demonstrates that the Respondent has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; and Rolex Watch U.S.A., Inc. v. NCSO,WIPO Case No. D2010-0948).
Therefore, the Complainant has established a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.
Therefore, the second element of the Policy has been fulfilled.
C. Registered and Used in Bad FaithAccording to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 web site 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 web site or location or of a product or service on its web site or location.
Considering the intensive use that the Complainant has made of its ENEL trademark, the reputation that it enjoys internationally, and that said fanciful trademark does not correspond to a dictionary word, it is safe to infer that ENEL is a well-known trademark.
Given the fact that ENEL is a fanciful, well-known trademark, which is not a dictionary word, this Panel finds probable that the Respondent knew the Complainant at the time of registration of the disputed domain name, and registered the disputed domain name probably due to its identity with the Complainant’s trademark, which constitutes bad faith registration under the Policy.
The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant’s well-known trademark ENEL, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747).
Previous panels appointed under the Policy have found that the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0; see also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882). This is so in the present case.
As to the use of the disputed domain name, notwithstanding its inactivity, the consensus view amongst panels appointed under the Policy is that the fact that a domain name is not active does not prevent a finding of bad faith (see section 3.3 of the WIPO Overview 3.0, “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc.,WIPO Case No. D2017-0246).
In the present case, the following facts have been found:
- That the Complainant’s trademark ENEL is well known.
- That said trademark refers directly and specifically to the Complainant’s ENEL company name, which company renders services to more than 26 million customers in Italy, and which is the parent company to the Enel Group, a company which operates through its subsidiaries in more than 32 countries, serving approximately 64 million customers, and which was ranked 87th in the Fortune Global 500 List of the Fortune Magazine, operating under several different domain names, including
- That the disputed domain name incorporates the ENEL trademark and company name in their entirety.
- That the Respondent has not filed any evidence or arguments to explain why he registered the disputed domain name. In this regard, the Respondent has not denied, or even responded to, the assertions of bad faith made by the Complainant in this proceeding. Instead the Respondent has indicated that the disputed domain name has been deleted (although it may have been referring to the website, and not the disputed domain name), and the Respondent has claimed that it had no interest in using the disputed domain name.
In light of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate under the Policy (seeTelstra, supra; CBS Broadcasting Inc. v. Dennis Toeppen,WIPO Case No. D2000-0400).
Therefore, the third element of the Policy has been met.
7. DecisionFor 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,
Kiyoshi Tsuru
Sole Panelist
Date: October 26, 2021