The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Registration Private, Domains By Proxy, LLC / Lukasz Czajka, Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 17, 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 amendment to the Complaint on September 20, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 14, 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 the largest Italian company in the energy market. It manages the majority of Italian electricity and gas distribution, serving more than 26 million Italian customers. Its business is highly diversified, ranging from hydroelectric, wind, geothermal, solar, thermoelectric, nuclear, and other renewable sources of power.
The Enel Group, of which the Complainant is the parent company, operates in more than 32 countries across four continents, bringing energy to around 64 million customers along 2.2 million kilometers. The Enel Group employs around 70,000 people worldwide, and had revenues amounting to around EUR 76 billion in 2018, with a net ordinary income close to EUR 5 billion.
The Complainant and its affiliated companies were ranked 87th in the Fortune Global 500 List in 2020, respectively 28th in the Fortune Changed the World List in 2018, which ranks the top 50 companies that have a positive social impact through activities that are part of their business strategies and operations.
The Complainant owns numerous trademarks on a worldwide basis consisting in all or in part of the term “ENEL”, such as, notably:
- Italian trademark 1299011 that was registered on June 1, 2010 in classes 9, 11, 16, 19, 25, 35-39, and 42;
- IR combined trademark registration 1322301 that was registered on February 4, 2016 in classes 4, 7, 9, 11, 12, 35-42.
The Complainant further owns more than 100 domain names which contain the trademark “ENEL”, including
On March 9, 2021, the Respondent registered the domain name
The Complainant first affirms that the domain name
It further considers that the Respondent has no rights or legitimate interests in the domain name as it is not known under that name, has never been authorized to exploit the Complainant’s trademark and has not made any bona fide use, or preparations to use the disputed domain name.
The Complainant finally is of the opinion that the disputed domain name was registered and is being used in bad faith. Considering the Complainant’s fame, the Complainant considers that the Respondent was aware of the “ENEL” trademark. It further uses it in bad faith as it intentionally exploits the reputation and distinctiveness of the “ENEL” trademark to attract users to its website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this 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.”
Pursuant to paragraph 4(a) of the Policy, the 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 registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant proves to hold several trademarks consisting in all or in part of the term “ENEL”.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added element, such as in the present case with a “pro”, does not avoid a finding of confusing similarity.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate InterestsAccording 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.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.”
Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of several “ENEL” trademarks. The Complainant has no business or other relationships with the Respondent and there is no site resolving from the disputed domain name which would give rise to an apparent legitimate purpose.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad FaithFor a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s “ENEL” trademarks enjoy a strong reputation.
As ruled by prior Panels (Enel S.p.A v. Super Privacy Service LTD c/o Dynadot LLC / Milen Radumilo,WIPO Case No. D2021-1615), considering the distinctiveness of the “ENEL” mark, there is no doubt that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name.
As already ruled, the mere passive holding of a domain name does not prevent the finding of a use in bad faith, which then has to be assessed on a case by case basis in consideration of the overall circumstances (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Such happens to be the case here. Taking into account the well-known character of the “ENEL” trademark, and in the absence of any arguments that the Respondent has the possibility to make to explain the registration of the disputed domain name, the Panel finds it hard to imagine that there could be any reasonable explanation for the holding of the disputed domain name by the Respondent. Such registration can only be explained by the Respondent’s attempt to attract users and lead them to mistakenly believe that the domain name would be affiliated with the Complainant, most likely so as to prevent the Complainant from registering the disputed domain name other than through the payment of an amount exceeding the out-of-pocket costs resulting from such a registration.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under 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
Philippe Gilliéron
Sole Panelist
Date: October 28, 2021