The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is 陈立 (Li Chen), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 8, 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 in English on October 13, 2021.
On October 8, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 11, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 October 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2021.
The Center appointed Joseph Simone as the sole panelist in this matter on November 24, 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 a leading company in the energy industry. Through its subsidiaries, the Complainant operates in more than 32 countries across four continents.
The Complainant has an extensive global portfolio of trade marks consisting of the term “ENEL”, including the following:
- Italy Trade Mark Registration for ENEL, No. 1299011, in Classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39, and 42, registered on June 1, 2010;
- European Union Trade Mark Registration for ENEL, No. 756338, in Classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39, and 42, registered on June 25, 1999;
- European Union Trade Mark Registration for ENEL, No. 15052152, in Classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41, and 42, registered on May 13, 2016;
- International Trade Mark Registration for ENEL, No. 1322301, in Classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41, and 42, designating China and a number of other jurisdictions, registered on February 4, 2016.
The Complainant owns the domain name
The disputed domain name was registered on March 17, 2021.
According to the screenshot provided by the Complainant, at the time of filing the Complaint, the disputed domain name resolved to an inactive webpage that indicates “Impossible raggiungere il sito” (“Unable to reach the site”). At the time of this Decision, the disputed domain name still resolves to an inactive website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that it has prior rights in the ENEL trade marks and that it is a leading player in the energy industry.
The Complainant further asserts that the disputed domain name is identical or confusingly similar to the Complainant’s ENEL trade marks, and the addition of the generic Top-Level Domain (“gTLD”) “.icu” does not affect the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
The Complainant also asserts that it has not authorized the Respondent to use the ENEL mark and there is no evidence to suggest 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.
The Complainant further notes that there is no evidence suggesting that the Respondent has any connection to the ENEL mark in any way, and that there is no plausible good faith reason for the Respondent to have registered the disputed domain name, especially after considering the relevant circumstances. The Complainant therefore concludes that the disputed domain name was registered by the Respondent in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of the ProceedingIn accordance with paragraph 11(a) of the Rules:
“[…] 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.”
In this case, the language of the Registration Agreement for the disputed domain name is Chinese. Hence, the default language of the proceeding should be Chinese.
However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting inter alia that:
- the disputed domain name includes only Latin characters; and
- the gTLD “.icu” is a shorthand for “I See You”, which suggests that the Respondent has knowledge of the English language.
The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not comment on the language of the proceeding or submit any response.
Considering the circumstances in this case, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.
B. Identical or Confusingly SimilarThe Panel acknowledges that the Complainant has established rights in the ENEL trade marks in many territories around the world.
Disregarding the gTLD “.icu”, the disputed domain name incorporates the Complainant’s trade mark ENEL in its entirety. Thus, the disputed domain name should be regarded as confusingly similar to the Complainant’s ENEL trade marks.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the ENEL trade mark and in demonstrating that the disputed domain name is identical or confusingly similar thereto.
C. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the complainant is required to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant asserts that it has not authorized the Respondent to use its trade mark and there is no evidence to suggest 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.
Thus, the Complainant has established its prima facie case with satisfactory evidence.
The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. Further, the disputed domain name still resolves to an inactive page. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.
In addition, the disputed domain name incorporates the Complainant’s trade mark ENEL in its entirety, and thus carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark 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) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy.
When the Respondent registered the disputed domain name on March 17, 2021, the ENEL trade mark was already widely known and directly associated with the Complainant’s activities. A simple online search for the term “enel” would have revealed that it is clearly a world-renowned brand, and would have shown its website “www.enel.com”.
Given the extensive prior use and fame of these marks, in the Panel’s view, the Respondent knew or should have been aware of the Complainant’s marks when registering the disputed domain name.
The Respondent has provided no evidence to justify its registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant’s trade marks, or that the Respondent’s adoption of the uncommon and distinctive trade mark ENEL was a mere coincidence.
The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights.
The fact that the disputed domain name currently links to an inactive page does not prevent a finding of bad faith under the doctrine of passive holding considering the circumstances of this case. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith pursuant to 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
Joseph Simone
Sole Panelist
Date: December 7, 2021