WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. Sergio Virgillito
Case No. D2021-1427
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Sergio Virgillito, Italy.
2. The Domain Names and Registrar
The disputed domain names <agenziaenel.com>, <agenziaenel.me>, <agenziaenel.net> and <agenziaenel.org> are registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 10, 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 May 10, 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 11, 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2021.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on July 1, 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 one of the largest Italian companies in the energy market.
Enel Group (of which Enel S.p.A. is part) operates through its subsidiaries in more than 32 countries, across 4 continents and distributes electricity and gas through a 2.2-million-kilometer network.
The Complaint started its business activities in 2001, in Brazil, Canada, Spain and the United States of America. Today Enel supplies energy all around the world and sells electricity and gas in many countries on the European continent.
Enel is also one of the largest energy companies in the Americas, with 71 power generation plants of all types and in South America Enel supplies energy through its subsidiaries to some of the largest cities: Rio de Janeiro, Bogota, Buenos Aires, Santiago, and Lima.
The Complainant operates under the trademark ENEL.
The Complainant is the owner of several trademark registrations for ENEL, which have been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain name, which was registered in 2020. Amongst others, Italian trademark ENEL, Reg. No. 0001299011, registered on June 1, 2010.
Enel is the owner of more than 100 domain names containing the trademark ENEL
This disputed domain names and their registration dates are below indicated:
- <agenziaenel.com>, registered on June 22, 2020
- <agenziaenel.net>, registered on July 23, 2020
- <agenziaenel.org>, registered on July 24, 2020
- <agenziaenel.me>, registered on August 19, 2020
The disputed domain names <agenziaenel.com>, <agenziaenel.net> and <agenziaenel.org> resolve to a landing page that lacks contents. The disputed domain name <agenziaenel.me> resolves to the same landing page, displaying the Complainant’s trademark.
5. Parties’ Contentions
The Complainant argues that the disputed domain names are identical and/or confusingly similar to its ENEL trademark as they incorporate the whole trademark.
The disputed domain names also include the word “agenzia” (which is the Italian term for “agency”). In fact even if the added word “agenzia” could be considered a generic word, in this case, is directly related to the services offered by the Complainant (CBS Broadcasting Inc. v. US address, WIPO Case No. D2010‑0322).
Thus, especially in this case, the use of the word “agenzia” determines an obvious association with the Complainant’s trademarks and does not dispel the likelihood of confusion.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain names to advance legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
The Complainant requests that the disputed domain names be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain names incorporate the word “enel”, which is identical to the Complainant’s registered well-known trademark ENEL.
It is clear that the disputed domain names incorporate the ENEL trademark to which the dictionary term “agenzia” has been added.
The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189 and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare, WIPO Case No. D2011‑2121 “The additional word ‘environment’ following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.”; see also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore concludes that the disputed domain names <agenziaenel.com>, <agenziaenel.net>, <agenziaenel.org>, <agenziaenel.me>, are confusingly similar to the Complainant’s trademark ENEL.
The Panel finds the first element of the Policy has therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain names.
The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s ENEL trademark.
The Respondent has registered the disputed domain names attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent’s registration and use of the disputed domain names is in bad faith, which the Respondent did not to rebut.
The Complainant has demonstrated that the disputed domain names <agenziaenel.com>, <agenziaenel.net> and <agenziaenel.org> resolve to sites with no contents. The disputed domain name <agenziaenel.me> displays the Complainant’s trademark, but lacks any content otherwise.
As regards the use in bad faith of the disputed domain names, pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding” (Instagram, LLC v. Registration Private, Domains By Proxy, LLC / asd sdasadasdds, WIPO Case No. D2021-1451). In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith.
On the basis of the above, noting also the nature of the disputed domain names, the Panel finds that the Respondent registered the disputed domain names to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks and domain names with the intention to use them for some illegitimate purpose.
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain names were registered and have been used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last element of the Policy, paragraph 4(a)(iii).
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 <agenziaenel.com>, <agenziaenel.me>, <agenziaenel.net> and <agenziaenel.org> be transferred to the Complainant.
Date: July 15, 2021