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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Redacted for privacy, Privacy service provided by Withheld for Privacy ehf / Oscar Monroy

Case No. D2021-1370

1. The Parties

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

The Respondent is Redacted for privacy, Privacy service provided by Withheld for Privacy ehf, Iceland / Oscar Monroy, Mexico.

2. The Domain Name and Registrar

The disputed domain name <enelectriccity.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 May 4, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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 May 5, 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 May 7, 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on June 15, 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 company in the energy market. With over 46 GW of installed capacity, 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, with a net installed capacity of around 86 GW and networks covering about 2.2 million kilometers and brings energy to around 64 million customers. The Complainant produces and sells electricity and gas in many countries around the world.

The Complainant owns a number of registrations for its ENEL trademark in various jurisdictions, including, for instance Italian trademark registration No. 0001299011, registered on June 1, 2010.

The Complainant is the owner of more than 100 domain names containing the trademark ENEL, including for instance <enel.it> and <enel.com>.

The disputed domain name was registered on January 12, 2021 and resolves to a parking page with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the entirety of the Complainant’s trademark. Addition of the term “ectriccity” being misspelling of the word standing “electricity” related to the Complainant’s main business activity does not preclude finding the confusing similarity. The generic Top-Level domain (the “gTLD”) should be ignored for the purposes of the similarity check.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has neither authorized, nor somehow given its consent to the Respondent to register and use the disputed domain name. The disputed domain name has been registered and it is being used around the Complainant’s trademarks in order to attract current and potential customers of the Complainant. The Respondent is the owner of at least 33 domain names registrations, most of which are confusingly similar to third parties’ registered trademarks. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, as the disputed domain name points merely to a parking page with pay-per-click links.

The disputed domain name was registered and is being used in bad faith. When registering the disputed domain name, the Respondent had knowledge of the Complainant’s earlier rights in and to the well-known trademark and trade name ENEL. The Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s trademark to attract Internet users to the website related to the disputed domain name at issue creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website depriving the Complainant of the possibility to register the disputed domain name in which it might have a legitimate interest. Passive holding of the disputed domain name constitutes bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant’s trademark.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable 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. The Panel finds that addition of the term “ectriccity” does not preclude finding the confusing similarity of the disputed domain name and the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Noting the arguments provided by the Complainant the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

According to section 2.9 of the WIPO Overview 3.0 the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds this applies to the present case.

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Italy and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the disputed domain name is resolving to a website with pay-per-click links intentionally attracting Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website. The Panel finds the above confirms the disputed domain name was registered and is being used in bad faith.

The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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 <enelectriccity.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: June 17, 2021

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