ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Enel S.p.A. v. Sergio Virgillito Case No. D2025-1584 1. The Parties The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy. The Respondent is Sergio Virgillito, Italy. 2. The Domain Name and Registrar The disputed domain name
is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2025. On April 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2025, 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 (On behalf of servizioelettriconazionale.name OWNER, c/o whoisproxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 2025, 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 May 2, 2025. 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 May 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2025.
page 2 The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 28, 2025. 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 Background The Complainant in this administrative proceeding is Enel S.p.A., Rome, Italy. The Complainant is one of the largest Italian companies in the energy market. With over 46 GW of installed capacity, it manages most of the Italian electricity and gas distribution grid, 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 28 countries across four continents, with a net installed capacity of around 89 GW and networks covering about 2.2 million kilometers and brings energy to around 64 million customers. The Enel Group is made up of nearly 70,000 people from around the world and its business is highly diversified, running on hydroelectric, wind, geothermal, solar, thermoelectric, nuclear and other renewable sources of power. In the two-year period from 2018, Enel posted revenues of approximately EUR 76 billion and net ordinary income of almost EUR 5 billion. Servizio Elettrico Nazionale (SEN) is a company controlled by Enel S.p.A. It is responsible for providing electricity under the regulated market (known as the “maggior tutela”). It handles electricity supply, billing, and customer service for residential and business customers. The Complainant is the owner of Italian Trademark registration No. 2016000105841 for SERVIZIO ELETTRICO NAZIONALE (device) registered on January 9, 2018. The Complainant also owns the domain name , registered on July 28, 2016. The disputed domain name was registered on April 29, 2024. At the time of filing of the Complaint and this Decision, the disputed domain name has not been linked to an active website. Indeed, it resolves to a courtesy page indicating that the owner should contact its hosting provider. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is identical to the SERVIZIO ELETTRICO NAZIONALE trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and particularly that it is implausible that the Respondent, located in Italy, was unaware of the Complainant’s trademark and services when it registered the disputed domain name, and thus that it registered the disputed domain name with the intention to exploit the goodwill of the Complainant’s trademark for its own benefit. The Complainant also claims that the Respondent has been the losing party in two other proceedings for having abusively registered other domain names (i.e. the domain names , , and in Enel S.p.A. v. Sergio Virgillito, WIPO Case No. D2021-1427 and in Enel S.p.A. v. Sergio Virgillito, MFSD Case 03/2022), which infringe
page 3 upon the Complainant’s ENEL trademarks, evidencing the Respondent’s thorough knowledge of the Complainant and its business activities. Thus, the pattern of systematic abusive domain name registrations related to the Complainant’s trademarks clearly demonstrates registration in bad faith. Moreover, the disputed domain name does not resolve to any active webpage. The Complainant thus concludes that the cumulative evidence shows that the Respondent’s registration of the disputed domain name is part of a continuing pattern of abusive registrations intended to capitalize on the recognition and goodwill of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that, as discussed below, it is highly likely that the Respondent was aware of the Complainant’s trademark registration and rights to the SERVIZIO ELETTRICO NAZIONALE trademark when it registered the disputed domain name. The disputed domain name is not only identical to the Complainant’s registered SERVIZIO ELETTRICO NAZIONALE trademark but also to the name of a company controlled by the Complainant. Owing to the fact that the Respondent has already been the losing party in two previous proceedings for having abusively registered five domain names incorporating anoter registered trademark of the Complainant, it is unlikely that the Respondent was not aware of the existence of the Complainant, or of the Complainant’s trademark SERVIZIO ELETTRICO NAZIONALE and its domain name , when registering the disputed domain name. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. On the basis of the above, noting also the nature of the disputed domain name, the Panel finds that the Respondent registered the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks and domain name with the possible intention to use it for some illegitimate purpose. The bad faith registration and use of the disputed domain name are also affirmed by the fact that the Respondent did not deny the assertions of bad faith made by the Complainant in this proceeding. The Panel also finds that the registration of the disputed domain name appears to be part of a continuing pattern of abusive registrations intended to capitalize on the recognition and goodwill of the Complainant’s trademarks. Finally, the Panel notes that the disputed domain name, which is not linked to an active website, resolves to a courtesy page indicating the owner should contact its hosting provider. Panels 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding.
page 5 Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, the composition of the disputed domain name, the Respondent’s previous registrations of other domain names containing the Complainant’s other trademarks, and the use of the privacy service when registering the disputed domain name, and finds that in the circumstances of this case the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. All the above considered, it is to be concluded that the disputed domain was registered and is being used by the Respondent in bad faith The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For 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 be transferred to the Complainant. /Fabrizio Bedarida/ Fabrizio Bedarida Sole Panelist Date: June 11, 2025
Full & Egal Universal Law Academy