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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Celso Barros

Case No. D2021-1170

1. The Parties

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

The Respondent is Celso Barros, Brazil.

2. The Domain Name and Registrar

The disputed domain name <enel.xyz> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, 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 April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent sent an informal communication to the Center on April 30, 2021.

The Center appointed William F. Hamilton as the sole panelist in this matter on June 4, 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 the largest Italian company in the energy market. The Complainant is the parent company of the Enel Group, which operates subsidiaries in more than thirty-two countries across four continents servicing 64 million customers. The Complainant is one of the largest energy companies on the South American continent and provides energy in major cities including Rio de Janeiro, Brazil and Buenos Aires, Argentina. The Complainant employs 70,000 people around the world in its highly diversified businesses.

The Annexes to the Complaint demonstrate that the Complainant owns hundreds of registrations around the world for the mark ENEL (the “Mark”), or incorporating the Mark, dating back decades before the Respondent’s registration of the disputed domain name. One of these trademarks is the European Union figurative mark ENEL No. 000756338, registered in June 25, 1999.

The Complainant is the owner of more than 100 domain names containing the Mark, including <enel.com>.

According to the Annexes to the Complaint, the disputed domain name at the time of the filing of the Complaint resolved to a page lacking any substantive content. The disputed domain name currently does not resolve to any website.

The Respondent registered the disputed domain name on November 10, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed entirely of the Complainant’s Mark. The Complainant asserts the disputed domain name is identical to the Mark, because the disputed domain name is composed by appending the generic Top-Level Domain (“gTLD”) “.xyz” to the Complainant’s Mark. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, with the exception of an informal communication to the Center which stated,

“Dear Sirs.
Please, I want to cancel the registration of “enel.xyz”.
Thanks.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy 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;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the disputed domain name was registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the Complainant’s Mark.

The disputed domain name is composed entirely of the Complainant’s Mark. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish identity for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Nomura International Plc / Nomura Holdings, Inc. contre Global Domain Privacy / Nicolas Decarli, WIPO Case No. D2016-1535 (transferring <nomura-bank.com>). See also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Nomura International Plc and Nomura Holdings, Inc. v. Whois Privacy Protection Service, Inc. / PUK SERVICES, WIPO Case No. D2015-2036 (transferring <nomuralabuan.com>); Nomura International Plc. v. Name Redacted, WIPO Case No. D2021-0654. In the instant case, the disputed domain name is identical to the Mark.

The generic Top-Level Domain of the disputed domain name, in this case “.xyz”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759 (transferring <monsterenergy.world>).

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent did not formally respond to the Complaint. Furthermore, the nature of the disputed domain name, being identical to the Mark, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and is being used in bad faith.

Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark 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) the respondent has registered the domain name in order to prevent the owner of the trademark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s well-known Mark. The Mark is not a common or descriptive term. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark and its website “www.enel.com”” and simply changed the Top-Level Domain to “.xyz” to facilitate registration for an illicit purpose within the meaning of paragraph 4(b) of the Policy. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. (Instagram LLC v. contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419).

It is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>); Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335 (transferring <monsterenergy.club>. Furthermore, the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See, WIPO Overview 3.0, section 3.3 and section 3.2.1.
The Complainant has met its burden under paragraph 4(a)(iii) 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 <enel.xyz> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: June 18, 2021

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