The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is S Jon Grant, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 15, 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 September 16, 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 September 20, 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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 29, 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 is a company listed on the Borsa Italiana that operates energy business with operations in 32 countries, has around 64 million customers, revenues in 2018 of approximately EUR 76 billion and was ranked 87th in the Fortune Global 500 List in 2020. The Complainant holds a portfolio of registrations for the trademark ENEL, and variations of it, in several countries, including European Union trademark ENEL (Reg. No. 000756338, registered on June 25, 1999) and the International trademark ENEL (Reg. No. 1322301, registered on February 4, 2016).
The Complainant owns numerous domain names that comprise or contain the trademark ENEL, including the domain name
The Respondent registered the Disputed Domain Name
The Complainant cites its trademark registrations including European Union Registration No. 000756338, registered on June 25, 1999, and numerous other registrations around the world, for the mark ENEL as prima facie evidence of ownership.
The Complainant submits that the mark ENEL is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for fair commercial gain, as the pay per click services pages generate revenue for the Respondent by taking advantage from the Complainant’s and its trademarks notoriety”, and contends that therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use, and well-known nature of the Complainant’s trademarks, and the use to which the Disputed Domain Name has been put as a PPC parking page.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ENEL in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ENEL trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ENEL; (b) followed by the gTLD “.fun”.
It is well established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc,WIPO Case No. D2021-0859). The gTLD chosen appears to have no special significance in this proceeding. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “enel”.
The Panel finds that the Disputed Domain Name is identical to the Complainant’s ENEL trademark.Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to PPC landing web page dominated by links including links advertising “Financial Products”, “Market Statistics”, Fixed Income Funds”, “Penny Stocks 2019”, Best Mortgage rates”, and “Stock Market News”, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. Lastly, the Disputed Domain Name consists entirely of the Complainant’s trademark carrying a high risk of implied affiliation that cannot constitute fair use given the suggested sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.
This Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s well-known trademark ENEL when it registered the Disputed Domain Name (see Enel S.p.A. v. Super Privacy Service LTD c/o Dynadot LLC / Milen Radumilo, WIPO Case No. D2021-1615 (“Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name”); ENEL S.p.A. v. Liu Jinping,WIPO Case No. DTV2012-0005 (“the name ENEL was known both in Italy and internationally as denoting the Complainant and its business as a leading Italian electricity supplier”); Enel S.p.A. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-3104 (“the Complainant’s distinctive and internationally-known trade mark”).
This Panel finds that there is no reason for Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of Complainant’s well-known trademark (see: Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (which held that the domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name at least 20 years after the Complainant established trademark rights in the ENEL mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ misdirection caused by the incorporation of the Complainant’s trademark in its entirety and without addition or modification. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Enel S.p.A. v. Super Privacy Service LTD c/o Dynadot, supra; WIPO Overview 3.0, section 3.5.
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark ENEL and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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,
Nicholas Weston
Sole Panelist
Date: November 4, 2021