WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. Super Privacy Service LTD c/o Dynadot
Case No. D2019-3104
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti SpA., Italy.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwenel.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on January 29, 2020. 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 is a large energy supplier trading under the name “Enel”. The Complainant’s group supplies around 73 million customers in 30 countries. In 2018, its revenue was approximately EUR 78 million.
The Complainant has operated a website at “www.enel.com” since at least 2008.
The Complainant owns many registered trade marks for ENEL including International Registration No.1322301 for the stylized term “enel”, registered on February 4, 2016, in classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41 and 42.
The disputed domain name <wwwenel.com> was registered on January 22, 2019.
As of December 16, 2019, the disputed domain name resolved to a parking page with assorted pay-per-click (“PPC”) links such as “Assicuraione Auto” and “Ryannair”.
5. Parties’ Contentions
The Complainant and its trade mark are well known worldwide.
The disputed domain name is confusingly similar to the Complainant’s trade mark, which is wholly incorporated within it.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not and cannot be known by the disputed domain name.
The Complainant has not authorised the Respondent to register the disputed domain name.
There is no evidence of bona fide use of the disputed domain name by the Respondent. A parking page based on the Complainant’s trade mark cannot constitute a bona fide offering.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name is being used for a parking page with links in Italian, thereby exploiting the reputation of the Complainant’s trade mark.
The disputed domain name is also substantially the same as the Complainant’s own domain name <enel.com> which is used for the Complainant’s main website.
The disputed domain name may attract, confuse and divert the Complainant’s customers. It does not matter if the parking page is not managed by the Respondent. The Respondent remains responsible for it.
The term “enel” is not a common or descriptive term, but a well-known trade mark in which the Complainant has exclusive rights.
The disputed domain name is registered through a privacy service which masks the Respondent’s identity.
The Respondent was aware of the Complainant when it registered the disputed domain name or at any rate it exercised wilful blindness.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark ENEL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable 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.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “www” does not to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to various goods / services as a part of a typosquatting scheme to mislead Internet users. See further under section 6C below. Such use of the disputed domain name cannot confer rights or legitimate interests on the Respondent.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is clear that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
The disputed domain name consists of a typosquatting variation of the name of the Complainant’s own website at “www.enel.com”, plainly designed to attract Internet users who omit the dot after “www” when attempting to visit the Complainant’s site.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name based on the Complainant’s distinctive and internationally-known trade mark in connection with a parking page, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The likelihood of confusion is not diminished by the possibility that at some point users arriving at the Respondent’s site will realize that the site is not connected with the Complainant because the PPC links do not relate directly to the Complainant’s industry. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the disputed domain name creates an implied risk of affiliation with the Complainant, and the Respondent, profits from at least some of the traffic intended for the Complainant.
Section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated PPC links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would of themselves prevent a finding of bad faith.
Notably, the Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <wwwenel.com> be transferred to the Complainant.
Date: February 12, 2020