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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. WhoisGuard, Inc. / Domain Admin, Texas Electricity Ratings

Case No. D2021-0760

1. The Parties

The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is WhoisGuard, Inc., Panama / Domain Admin, Texas Electricity Ratings, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <enelgreepower.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2021. On March 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 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 March 22, 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 March 26, 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on May 10, 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 Background

The Complainant is an Italian based publicly listed energy company that serves the majority of the Italian electricity and gas distribution network with more than 26 million Italian customers. It is also the parent company of the Enel Group, which operates through its subsidiaries in more than 32 countries across four continents, including in the Americas where it operates in 11 countries, mainly through “Enel Green Power North”. In North America “Enel Green Power” is considered a leading owner and operator of renewable energy plants with projects operating and under development in 24 U.S. states and two Canadian provinces operating more than 100 power plants. In 2019 the Complainant was ranked 89th in the Fortune Global 500 List of the world’s largest companies.

The Complainant owns numerous trade mark registrations that incorporate its ENEL and ENEL GREEN POWER marks including the European Union Trade Mark (“EUTM) No. 015103146 for ENEL GREEN POWER in fancy logo script registered on May 26, 2016 and Italian Trade Mark Registration No. 2016000008947 for ENEL also in fancy logo script registered on July 3, 2017. The Complainant also owns numerous domain name registrations that incorporate its ENEL GREEN POWER mark including <enelgreenpower.com> which was registered in 2001 and from which it operates its main website for the Enel Green Power business.

The Respondent is based in Texas, U.S. The disputed domain name was registered on May 24, 2019 and previously resolved to a website of a business called “Enelgree Power” with a street and mailing address in Utah, U.S. and in the “About Us” section includes the following description of itself:

“one of the major players in the world in the energy sector. We have been in the business for more than three decades, and we have come a long way. Our services are spread all across the world, and we are striving to be the best in what we do.”

At the time of this decision, the disputed domain name redirected to the Complainant’s official website at “www.enelgreenpower.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for its ENEL and ENEL GREEN POWER trade marks as set out above. It says that the disputed domain name wholly incorporates its ENEL trade mark and is therefore confusingly similar to it. In the alternative, it says that the disputed domain name differs by only one letter from the ENEL GREEN POWER trade mark, namely by the omission of the letter “n”. The Complainant says that this amounts to a case of typosquatting intended to confuse Internet users seeking the Complainant’s brand because of the confusing similarity between the disputed domain name and the ENEL GREEN POWER trade mark.

The Complainant says that the Respondent is not known by the disputed domain name and that it has neither authorized, nor somehow given its consent to, the Respondent to register and use the disputed domain name. It notes that the ENEL GREEN POWER mark is not a common or descriptive term and says that as a result of very considerable use by the Complainant that its ENEL GREEN POWER mark is well known. The Complainant further says that the Respondent operates a website, at a domain name different to the disputed domain name, where people can compare the different prices of electricity plans and a community where people can share their opinions and comments in the energy field.

The Complainant submits that the disputed domain name <enelgreepower.com> has been registered and is being used based upon the Complainant’s trade marks ENEL and ENEL GREEN POWER in order to attract current and potential customers of the Complainant to the website at the disputed domain name. It notes that this website includes in its “About Us” section the description noted above which is obviously fake as based on the Complainant’s Google search there is no company called “Enelgree Power” and the company that comes up as being the closest hit is the Complainant’s “Enel Green Power” business. In short, the Complainant says that the Respondent is using the disputed domain name in order to misleadingly divert consumers searching for the Complainant’s business to the Respondent’s website at the disputed domain name with the obvious purpose of causing confusion among them and tarnishing the reputation of the Complainant’s ENEL GREEN POWER trade mark. As a result the Complainant asserts that it has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name.

Considering the degree of renown attaching to the Complainant’s ENEL GREEN POWER trade mark in North America in the field of renewable energy, the Complainant submits that the Respondent must have been aware of the Complainant and of its mark when it registered the disputed domain name. Further, says the Complainant, the fact that the disputed domain name is so similar to its ENEL GREEN POWER mark and is being used misleadingly to attract Internet users to a website that promotes services in the same business field, namely the energy sector, is prima facie evidence that the disputed domain name was registered in bad faith.

The Complainant also asserts that the Respondent is unfairly and intentionally taking advantage of, and exploiting without authorisation, the reputation and distinctiveness attaching to the Complainant’s trade marks ENEL GREEN POWER and ENEL to attract Internet users for commercial gain to its website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trade mark ENEL GREEN POWER as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered thereon in terms of paragraph 4(b)(iv) of the Policy.

The only conclusion, says the Complainant, is that the disputed domain name was registered and is being used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for ENEL GREEN POWER in fancy logo script under EUTM No. 015103146 registered on May 26, 2016 and an Italian Trade mark Registration No. 2016000008947 for ENEL also in fancy logo script registered on July 3, 2017. The dominant element of Italian Trade Mark Registration No. 2016000008947 is the word ENEL and the dominant element of EUTM No. 015103146 is the word ENEL GREEN POWER, both trade marks comprising the respective words simply presented in a coloured fancy font.

The disputed domain name wholly incorporates the Complainant’s distinctive ENEL mark and the Panel therefore finds that it is confusingly similar to the Complainant’s ENEL mark. Further, the disputed domain name (before the “.com” Top-Level Domain) differs from the ENEL GREEN POWER mark only by omission of the letter “n”. The disputed domain name is therefore also confusingly similar to the Complainant’s ENEL GREEN POWER trade mark.

Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not known by the disputed domain and that it has neither authorized, nor somehow given its consent to the Respondent to register and use the disputed domain name. It has asserted that the ENEL GREEN POWER mark is neither a common nor descriptive term and that as a result of very considerable use by the Complainant its ENEL GREEN POWER mark is well known.

According to the Complainant, the disputed domain name has been registered and is being used based upon the Complainant’s trade marks ENEL and ENEL GREEN POWER in order to attract current and potential customers of the Complainant to the website at the disputed domain name. Considering that the website at the disputed domain name included in its “About Us” section the corporate description noted above which was obviously a description of the Complainant’s business and as it appears, based on the evidence produced by the Complainant, that there is no company called “Enelgree Power” operating at the stated address in Utah, U.S., or elsewhere, the Panel agrees with the Complainant that this company appears to be a fake one. Therefore, the disputed domain name has not been used in connection with a bona fide offering of goods or services.

On balance the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. As a result, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s businesses under the distinctive ENEL and ENEL GREEN POWER marks are long well-established international businesses. In particular in North America the Complainant’s “Enel Green Power” business is according to the Complainant considered a leading owner and operator of renewable energy plants with projects operating and under development in 24 U.S. states and two Canadian provinces operating more than 100 power plants. On this basis the Respondent, ostensibly operating in the same energy sector, must have known of the Complainant and its business when it registered the disputed domain name in 2019. In addition, the fact that the disputed domain name differs from the Complainant’s mark and domain name by one letter and that the website to which it resolved described a business that could be the Complainant’s business, cannot have been mere coincidence.

The Complainant asserts that this case is an example of typosquatting and the fact that the disputed domain name is so similar to its ENEL GREEN POWER mark and is being used misleadingly to attract Internet users to a website that promotes services in the same business field, namely the energy sector, is evidence that the disputed domain name was registered in bad faith. The Panel agrees with the Complainant’s analysis in this regard. In addition, the Panel notes that the Respondent seems to be operating in the same or a related business field to the Complainant’s one, and finds it likely that the Respondent was aware of the Complainant’s trademark at the time of the registration of the disputed domain name.

Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on the website amounts to evidence of both registration and use in bad faith.

It is apparent that the Respondent has used the disputed domain name, which differs by one letter from the Complainant’s ENE LGREEN POWER trade mark and also from the Complainant’s <enelgreenpower.com> domain name, to attract Internet users for commercial gain to its website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and services. As a result, the Panel finds that this amounts to evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

At the time of the decision, the disputed domain name redirects to the Complainant’s official website which does not change the Panel’s finding of bad faith as the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the Complainant.

Accordingly, the Complaint also succeeds under this 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 <enelgreepower.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: May 24, 2021

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