The Complainant is Enel SPA., Italy, represented by Mauro Delluniversità of Società Italiana Brevetti S.p.A.
The Respondent is Milen Radumilo, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 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 December 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 December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on January 24, 2022. 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.pA. is a global energy provider and the largest Italian company in that market. It is also one of the largest energy companies in the Americas. The Enel group of companies has nearly 70,000 employees worldwide with revenues of approximately 76 billion EURs in 2020.
The Complainant has a large portfolio of trademark registrations including ENEL in Italy No. 1299011 with the General Bureau of Industrial Property Protection of Italy, registered on June 1, 2010, in classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42; ENEL also in Italy trademark registration No. 301998900653859 in classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42; ENEL with device European Union trademark registration, No. 756338, registered June 25, 1999, in classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39, 42; and ENEL International Registration designating China, Colombia, Algeria, Israel, Morocco, Mexico, Russian Federation, No. 1322301 registered on February 4, 2016, in classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41, 42,
The disputed domain name was registered on August 31, 2020, and does not resolve to any website.
5. Parties’ Contentions A. ComplainantThe Complainant is a global energy company with a worldwide reputation vesting in its distinctive trademark ENEL. The Complainant is the official sponsor of a number of events in sports, in relation to electric car racing and cycling.
The Complainant points out that numerous panels have held that a disputed domain name is confusingly similar to a trademark if that mark is incorporated in its entirety in the domain name concerned. That is the case here, and additionally the disputed domain name also contains the term “portal”, so that Internet users may be led to believe that it is owned by the Complainant and it reliably leads to one of its legitimate sites.
The Complainant also points out that the Respondent is not known by the disputed domain name and cannot have rights in that mark, in which the Complainant has exclusive rights. The Complainant found no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. In any case the Complainant says that it is evident that the use of the disputed domain name for a page that is built on and around the Complainant’s trademark ENEL does not establish rights or legitimate interests and cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Complainant also says that the registration of the disputed domain name was carried out in clear bad faith because there is no connection between the Respondent and the Complainant's ENEL trademarks; the disputed domain name is not used in good faith for the offering of goods and services to the public, nor is it used for legitimate commercial or noncommercial purpose without the intention of misleading the Complainant's customers or infringing the registered ENEL trademarks. The disputed domain name does not lead to any active site. So-called passive holding, according to the Complainant, indicates bad faith. Nor is “ENEL” a common or descriptive term, rather it is obviously a trademark in and to which the Complainant has demonstrable rights, and what is more, it is, according to the Complainant, a well-known mark; and finally, the disputed domain name reproduces, without any authorization or approval, the Complainant's registered trademarks ENEL, which is the only distinctive component of the disputed domain name.
All this allows the Complainant to conclude that in registering the disputed domain name, the Respondent had knowledge or at any rate exercised a willful blindness to the Complainant’s earlier rights in and to the trademark and trade name ENEL, and is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s trademark ENEL to attract Internet users to the websites related to the disputed domain name creating a likelihood of confusion with the Complainant’s trademark ENEL as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites depriving the Complainant of the possibility to register the disputed domain name in which it might have a legitimate interest. In any case, multiple proceedings against this Respondent have been pursued before the Center, says the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name is not identical to the Complainant’s ENEL trademark. However, it reproduces that mark in its entirety and ENEL is immediately recognizable within the disputed domain name. The addition of the term “portal” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Therefore the Panel holds that the disputed domain name is confusingly similar to the ENEL mark of the Complainant.
B. Rights or Legitimate InterestsThe Respondent has not answered any of the Complainants contentions. There is no evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. The disputed domain name is not in fact used for any purpose that could vest such rights or support a legitimate interest of the Respondent. The Respondent was not authorized to use the disputed domain name and there is no evidence that the Respondent is commonly known by that name or the ENEL trademarks.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name was registered at a time that the Complainant’s reputation vested in its ENEL trademarks was already well established around the world. The Complainant is a very large energy provider with operations in many countries that makes prominent use of its ENEL marks. The composition of the disputed domain name as well demonstrates that the Respondent must have been well aware of the Complainant’s rights in the ENEL mark which is incorporated in the disputed domain. The Respondent has not put the disputed domain name to any use, but given the distinctiveness of the ENEL trademark and its global reputation, it is difficult to imagine any use the Respondent could legitimately make of the disputed domain name without the approval of the Complainant. The addition of the term “portal” in the disputed domain name reinforces the likelihood of confusion as it gives the impression of a legitimate connection with the Complainant even though no such connection exists. Passive holding of a domain name can amount to bad faith use, as it does in the circumstances of this case.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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
William A. Van Caenegem
Sole Panelist
Date: February 7, 2022