WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. Antonio of Santis, ANTONIO DE SANTIS
Case No. D2021-1260
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Antonio of Santis, ANTONIO DE SANTIS, Italy.
2. The Domain Names and Registrar
The disputed domain names <enelstation.com>, <enelstation.net>, <enelstations.cloud>, <enelstations.com>, <enelstations.net>, <enelxstation.com>, <enelxstation.net>, and <enelxstations.com> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 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 April 30, 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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent filed informal emails with the Center on April 27, 2021 and on May 4, 2021. The Center sent a possible settlement email to the Parties on May 5, 2021. The Complainant did not request the proceeding to be suspended. The Panel informed the Parties of the Commencement of Panel Appointment process on May 28, 2021.
The Center appointed Anna Carabelli 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 energy company and one of the main global operators in the energy market. It manages the majority of the Italian electricity and gas distribution network, 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 32 countries across four continents and brings energy to around 64 million customers.
The Complainant owns several trademark registrations for ENEL and ENEL X throughout the world (Annex 15 to the Complaint), including the following:
- Italian trademark registration No 1299011 for the ENEL trademark, registered on June 1, 2010;
- European Union trademark registration No 756338 for the ENEL device trademark, registered on June 25, 1999;
- International trademark registration No 1432290 for the ENEL X figurative trademark, registered on March 28, 2018
The Complainant is the owner of more than 100 domain names containing the trademarks ENEL and ENEL X, including <enel.it>, <enel.com>, and <enelx.com>.
The disputed domain names have been registered at the turn of December 2020 and January 2021, and all resolve to a parking page of Sedo, where the domain names are for sale (Annex 17 to the Complaint).
5. Parties’ Contentions
The Complainant asserts and contends that:
(a) the disputed domain names are confusingly similar to the trademark ENEL and ENEL X in which the Complainant has rights, as they incorporate the Complainant’s trademarks in their entirety with the mere addition of the generic terms “station” or “stations”.
(b) The Respondent has no rights or legitimate interests in the disputed domain names since: (i) the Complainant has not authorized or somehow given consent to the Respondent to register and use the disputed domain names; (ii) the Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use; (iii) the disputed domain names resolve to a parking page of Sedo, where they are for sale.
(c) The disputed domain names were registered in bad faith. The Complainant’s trademarks ENEL and ENEL X are well known worldwide and in Italy where the Respondent is based. The fact that the disputed domain names comprises the Complainant’s distinctive trademark indicated that the Respondent was well aware of the Complainant’s trademarks when registering the disputed domain names.
With reference to the circumstances evidencing use in bad faith, the Complainant indicates that the disputed domain names resolve to a parking page, which announces that the disputed domain names are for sale. The Respondent’s broker Sedo did in fact try to sell to the Complainant two of disputed domain names for an amount (EUR 19,800) far in excess of the Respondent’s out of pocket expenses.
Finally, the Complainant underlines that the Respondent has a history of registering domain names that have value to the rights holder of particular brands.
The Respondent did not formally reply to the Complainant’s contentions. In fact, on April 27 2021 the Respondent sent an email in Italian simply saying that he is the current registrant of the disputed domain names and did not understand why he was receiving communications from the Center. The Center responded by confirming that the language of the proceeding is the same as the Registrar confirmed Registration Agreement, i.e. English. As the email from the Respondent was received before, the Notification of Complaint was sent to all Parties, the Center informed the Respondent of the proceeding and invited the Respondent to consult WIPO Response filing guidelines. The Respondent sent an email in English on May 4, 2021, stating that the Complainant can buy the disputed domain names directly via Sedo.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademarks ENEL and ENEL X based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 15 to the Complaint.
The disputed domain names are confusingly similar to the Complainant’s trademarks, as they entirely incorporate the Complainant’s marks ENEL and ENEL X with the addition of the dictionary terms “station” and “stations” which does not diminish the confusingly similarity when comparing the disputed domain names and the Complainant’s trademarks. As recorded in 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 does not prevent a finding of confusing similarity under the first element.
The addition of the TLD “.com”, “.net”, and “.cloud” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. (see section 1.11 of the WIPO Overview 3.0).
In the light of the above, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademarks. The Complainant asserts that the Respondent cannot demonstrate any legitimate non-commercial or fair use of the disputed domain names. In this connection, the Complainant has provided evidence that the disputed domain names resolve to a parking page of Sedo, where the same disputed domain names are for sale.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1).
By not submitting a formal Response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.
Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith.
The disputed domain names incorporate the Complainant’s trademarks ENEL and ENEL X and were registered long after these trademarks became well known. Given the distinctiveness and well-established reputation of the Complainant’s trademarks (also recognized in Enel S.p.A. v. Lucky Graziano, enel.website, WIPO Case No. D2021-1014) it is not conceivable that the Respondent did not have in mind it when registering the disputed domain names. Such fact suggests that the disputed domain names were registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant.
The uncontested evidence submitted by the Complainant show that the disputed domain names resolve to a parking page where the same are for sale. In addition, the Complainant has provided evidence of a series of approaches to it from the Respondent’s broker Sedo, to sell two of the disputed domain names (in which the Complainant had shown interest) for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names (the initially requested price for each domain name was EUR 19,800, progressively reduced to EUR 2,980 and EUR 580). In the Panel’s view, this evidence suggests that the Respondent had no particular use in mind for the disputed domain names, other than the potential for them to be opportunistically used to be sold to the Complainant. The absence of any documented rights or legitimate interests of the Respondent in the disputed domain names and the fact that the Respondent is the registrant of a large portfolio of other domain names that apparently incorporate the trademarks of third parties corroborate the above conclusion.
In view of the above, the Panel finds that the Complainant has demonstrated that the Respondent registered and used the disputed domain names in bad faith according to paragraph 4(a)(iii) 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 names, <enelstation.com>, <enelstation.net>, <enelstations.cloud>, <enelstations.com>, <enelstations.net>, <enelxstation.com>, <enelxstation.net>, and <enelxstations.com>, be transferred to the Complainant.
Date: June 18, 2021