WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. GEOSIS Srl, GEOSIS SRL

Case No. D2021-1940

1. The Parties

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

The Respondent is GEOSIS Srl, GEOSIS SRL, Italy, represented by Tonucci & Partners, Italy.

2. The Domain Names and Registrar

The disputed domain names <enel.space> and <enelx.space> are registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 21, 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 June 23, 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 June 28, 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021.

A communication from Respondent was received by the Center on July 13, 2021. On July 13, 2021, the Possible Settlement email was sent to Parties by the Center. On July 14, 2021, the request for suspension email sent by the Complainant was received by the Center, the Administrative Proceeding was suspended on the same day. On July 30, 2021, the notice of Reinstitution of Proceeding was sent to Parties by the Center as requested by the Complainant. The due date for Response was extended to August 8, 2021 accordingly. A communication from Respondent was received by the Center on July 28, 2021. The Commencement of Panel Appointment Process was sent to the Parties on August 9, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on August 16, 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

Enel S.p.A (hereinafter referred to as “Enel” or the “Complainant”) is one of the largest Italian companies in the energy market. It manages the greater part 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 4 continents and brings energy to around 64 million customers.

Today the Complainant supplies energy worldwide, with an extensive presence in Europe. The Complainant is also one of the largest energy companies in the Americas, with 71 power generation plants of all types with a managed capacity of around 6.03 GW across 18 states in the Unites States of America (“United States”) and Canada, and in South America up to the central Andes.

The Complainant is the owner of more than 100 domain names containing the trademark ENEL, including <enel.it> and <enel.com>, both of which have been registered in the name of the Complainant since 1996.

The Complainant owns the ENEL mark, which enjoys thorough protection through many registrations thereof worldwide, including in the United States and in Italy.

The Complainant is, inter alia, the owner of:

Italian trademark registration number 0001299011 for the ENEL trademark, registered on June 1, 2010; and European Union trademark registration number 000756338 for the ENEL device trademark, registered on June 25, 1999.

The disputed domain names were both registered on November 21, 2019.

The disputed domain names resolve to a registrar waiting page with no contents.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) the disputed domain names are identical or at least confusingly similar to the Complainant’s trademark;
(b) the Respondent lacks any rights or legitimate rights in the disputed domain names; and
(c) the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

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

In fact, the Respondent’s representative sent two informal communications to the Center on July 13, 2021 and on July 28, 2021, respectively. With its first communication the Respondent informed the Center that it was interested in reaching a settlement with the Complainant and requested the automatic 4-days extension of the term to submit a response. Then, with its second communication, the Respondent informed the Center that no settlement agreement had been reached, and that the Respondent did not intend to object to the transfer of the disputed domain names to the Complainant.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain names are identical or confusingly similar to a trade mark 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 have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <enelx.space> consists of a small variation of the Complainant’s trademark. Specifically, this consists of the addition of the letter “x” at the end of the wording “enel”. By contrast, the disputed domain name <enel.space> is identical to the Complainant’s trademark.

The addition of the letter “x” to the Complainant’s trademark in the disputed domain name <enelx.space> does not avoid a finding of confusing similarity under the first element of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “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 considers that the gTLD “.space” is irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain names. See WIPO Overview 3.0, section 1.11.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent does not appear to be commonly known by the name “enel” or by any similar name. The Respondent has no connection to or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In fact, the disputed domain names do not resolve to an active webpage. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain names. Indeed the Respondent agrees (or, in its representative’s words, “does not object”) to transfer the disputed domain names to the Complainant.

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Panel, based on the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain names were registered and have been used in bad faith.

Indeed, the Complainant gives several bases for its contention that the disputed domain names were registered and are being used in bad faith.

“Enel” is not a common or descriptive term, but a renowned trademark, especially in Italy where the Respondent resides.

The disputed domain names reproduce, without any authorization or approval, the Complainant's registered ENEL trademarks, and this is the only distinctive component of the disputed domain names. Therefore, the fact that the disputed domain names are identical and almost identical to the Complainant’s ENEL trademark carries with it a high risk of implied affiliation. Section 2.5.1 of the WIPO Overview 3.0.

The disputed domain names were registered many years after the Complainant’s renowned trademarks were registered. In addition, owing to the substantial presence established worldwide and particularly in Italy – where the Respondent resides – and on the Internet by the Complainant, who has registered more than 100 domain names in gTLDs and country code Top-Level Domains (“ccTLDs”) worldwide which incorporate the trademark ENEL as a domain name, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when registering the disputed domain names that are identical and almost identical to the Complainant’s trademark.

Therefore, it is more likely than not that the Respondent, when registering the disputed domain names, had knowledge of the Complainant’s earlier rights to the ENEL trademark and trade name.

Furthermore, the Panel finds that the passive holding of the disputed domain name in the circumstances of the case does not prevent a finding of bad faith registration and use. On the contrary, this Panel agrees with previous panelists’ assertion that in the case of domain names containing well-known earlier marks, passive holding can constitute an indication of bad faith.

Here the Panel finds that the Respondent’s passive holding of the disputed domain names constitutes bad faith use and registration (see section 3.3 of the WIPO Overview 3.0) as well as a disruption of the Complainant’s business.

The bad faith registration and use of the disputed domain names is also affirmed by the fact that the Respondent has not denied, the assertions of bad faith made by the Complainant in this proceeding.

Finally, in the Panel’s view the Respondent’s assertion that it will not object to a transfer of the disputed domain names to the Complainant amounts to a recognition of the Complainant’s prior rights and claims.

Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith. Therefore, the Complainant has satisfied 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 names, <enel.space> and <enelx.space> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: August 30, 2021