WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. WhoisGuard, Inc. / Jorge Villaronga
Case No. D2021-2110
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is WhoisGuard, Inc., Panama / Jorge Villaronga, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <enel.top> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 July 6, 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 July 8, 2021. On July 15, 2021, the Respondent sent an email communication to the Center.
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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Response was filed with the Center on August 6, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 17, 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.
On September 3, 2021, the Panel issued a Panel Order (Panel Order No. 1) requesting the Respondent to provide evidence of the nature and existence of its alleged project related to the disputed domain name (such as the development of the website itself, invoices for its design, drafts of the content, etc.), and offering the Complainant (following the Respondent’s submission), the opportunity to provide comments or additional evidence. On September 7, 2021, the Respondent responded to Panel Order No. 1. On September 9, 2021, the Complainant provided its observations in reply to Panel Order No. 1 and the Respondent’s submission.
4. Factual Background
The Complainant is an Italian company, founded in 1962, active in the energy market and 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, bringing energy to around 64 million customers. The Complainant and its group supply energy worldwide, with an extensive presence in Europe as well as in the Americas, including the United States, Canada and South America up to the central Andes. In the United States, the Complainant and its group have 71 power generation plants of all types with a managed capacity of around 6.03 GW across 18 states in the Unites States (including Florida, where the Respondent is located).1
The Complainant operates under the trademark ENEL, which enjoys thorough protection through many registrations thereof worldwide, including European Union Trademark Registration No. 15052152, ENEL, figurative, registered on May 13, 2016, in classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41, and 42; and United States Trademark Registration No. 5853703, ENEL, figurative, registered on September 10, 2019, in classes 9, 11, 36, 37, 39, 40, and 42, (collectively the “ENEL mark”).
Prior decisions under the Policy have recognized the well-known character of the ENEL mark.2
The Complainant further owns more than 100 domain names comprising the ENEL mark, including <enel.com> (registered on February 10, 1996), which is linked to its corporate website since 1996.3
The disputed domain name was registered on October 8, 2020, and it currently resolves to a landing page in Spanish language, which displays, in its left top side, the terms “en el top” and an arrow pointing to the top, indicating various sections with no content (related to “about me”, “portfolio” and “contact”). This site includes various legends that may be translated into English as “Take your idea to the top of the page of your social network”, “Offer multiple options to your followers when you post on your profile!” “Share your links and products in an easy and fun way!”, and prominently displays a coming soon message included within an orange rectangle that may be translated as “Soon on your favorite network”.
According to the evidence provided by the Complainant, at the time of filing the Complaint the disputed domain name was inactive.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The ENEL mark is internationally well known (various evidences in support of this character are provided).
The disputed domain name incorporates the ENEL mark (and the Complainant’s company name), being the gTLD “.top” irrelevant in the comparison under the first element of the Policy. The disputed domain name is identical or confusingly similar to the ENEL mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the use of its trademark, and, before any notice to the Respondent of this dispute, there was no evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name was inactive.
The disputed domain name was registered and is being used in bad faith. The disputed domain name reproduces (with no rights or legitimate interests) the Complainant’s company name and its reputed ENEL mark, which is not a common or descriptive term. The Respondent knew or should have known the Complainant’s earlier rights in the term “enel”. The disputed domain name targeted the reputed ENEL mark for exploiting its reputation in order to increase the traffic of the Respondent’s website, or in order to use it for a pay-per-click (“PPC”) website, for a commercial gain. The passive holding of the disputed domain name corroborates the Respondent’s bad faith. The Respondent is the CEO of a marketing company (Nahtek Inc.), providing online SEO services (i.e. strategies and practices aimed at increasing the visibility of a website by improving its position and indexing in search engine rankings). The Respondent’s mailing address is located in Italy, where the Complainant is based and enjoys reputation.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Complainant’s observations in reply to Panel Order No. 1 may be summarized as follows:
The evidences submitted by the Respondent in response to Panel Order No. 1 are undated and not referred to a concrete project, not providing any information about dates of creation of its alleged project, its nature and existence, time of its development or the development of the Respondent’s website itself, invoices for its design, drafts of its content, etc. These evidences are weak and produced in order to create the appearance of a legitimate interest.
The limited information and evidence provided by the Respondent is insufficient to establish rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name, made demonstrable preparations to use the disputed domain name before notice of this dispute, or is making a legitimate noncommercial or fair use. The Complainant provided evidence that the content linked to the disputed domain name was different at the date of filing the Complaint.
The disputed domain name was registered as a single word without punctuations, coinciding with the Complainant’s reputed trademark. The trademark ENEL is a “top” leader according to the Central America and United States media, thus it easy to associate in Internet searches the brand ENEL and the word “top”. The Respondent artificially uses the word “top” instead of its Spanish translation (“tope”) in the current content linked to the disputed domain name.
B. Respondent
Key contentions of the Response may be summarized as follows:
The disputed domain name is not identical or confusingly similar to the Complainant’s trademark. The disputed domain name is composed of two common Spanish words, a preposition and a pronoun, “en” (which can be translated into English as “on”) and “el” (which is equivalent to “the”), meaning “on the top” (“en el tope”), as a combination of English and Spanish words, aiming to attract Spanish / English-speaking people.
The disputed domain name was purchased via Namecheap.com with no knowledge or interest in the Complainant or the ENEL mark, and it is not used for exploiting the reputation of the Complainant or its trademark. The disputed domain name has been inactive as other projects took priority. However, it no longer resolves to an inactive page and has a landing page with the intentions of the final project that will not be associated with Nahtek Inc.
The disputed domain name is meant to have no connection with the Complainant’s company name and its trademark, and is not being used in bad faith. The Respondent’s intention is to offer services to link or connect all social media platforms for entities who want a centralized location for all their followers. The disputed domain name is not based in Italy, nor will it market to Italian-speaking web users.
The Respondent requests the Panel to deny relief to the Complainant.
In response to Panel Order No. 1, the Respondent provided a few examples of the services that the website linked to the disputed domain name may offer in the future, indicating that these examples of social media pages “will have a linked on the top portion of the page (en el top de la página) to make it easier for people to share their contact or information”. These examples included various undated images of pages’ tests for various unmarked products (like biscuits and coffee).
6. Discussion and Findings
The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,4 taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered trademark ENEL, both by virtue of its numerous trademark registrations and as a result of its global goodwill and reputation.
The disputed domain name incorporates the ENEL mark in its entirety, and the gTLD “.top” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The Panel considers that the ENEL mark is recognizable in the disputed domain name, and this fact is not affected by the circumstance that the disputed domain name (including the gTLD “.top”) may form a phrase with a certain meaning in a specific language (in this case, in Spanish), because the Complainant’s trademark is still recognizable in the disputed domain name. See sections 1.7, and 1.11, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
The Respondent has alleged a bona fide use of the disputed domain name, unrelated to the Complainant and its reputed trademark, indicating that it registered the disputed domain name in connection with the meaning of the Spanish words “en” (equivalent to “on”) and “el” (“the”) and the gTLD “.top”, for a project addressed to the Spanish / English-speaking people. The Respondent alleges that this project consists of offering services to link or connect all social media platforms for entities who want a centralized location for all their followers.
The Complainant’s allegations related to the Respondent’s connection with a marketing company, providing online SEO services (being its CEO), has not been contested by the Respondent, simply indicating that the project related to the disputed domain name will not be related to this marketing company.
However, the Panel notes that the Respondent’s landing page specifically alludes to certain SEO services related to social media platforms, as it indicates that its project or platform will allow its users to “take your idea to the top of the page of your social network”.
The Panel further notes that the Respondent in its Response did not provide any evidence related to its project or its preparations for it. The only evidence provided by the Respondent in its Response is a copy of its landing page, which only displays a few sentences with no content. In response to Panel Order No. 1, the Respondent provided a few undated examples of possible future pages related to its alleged project and platform.
Moreover, according to the evidence provided by the Complainant (not rebutted by the Respondent), the disputed domain name was inactive at the time of filing the Complaint, and the Respondent’s landing page has been linked to the disputed domain name at some stage after the submission of the Complaint.
The Panel considers that the Respondent’s undated evidence submitted in response to Panel Order No. 1 does not establish that this alleged project started prior to the moment when the Respondent had knowledge of the Complaint, and regardless of the timing of its claimed plans, the evidence submitted is not sufficient to lead the Panel to conclude of an intention other than to register a domain name corresponding to the Complainant’s mark. It is to be noted that claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence. See section 2.2, WIPO Overview 3.0.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not sufficiently rebutted the Complainant’s prima facie case, considering that the Respondent has not sufficiently demonstrated any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the international well-known character of the ENEL mark, which has been recognized by previous decisions under the Policy.5 The Panel has corroborated that the ENEL mark has extensive presence over the Internet and it is well known internationally and particularly in the Unites States, and the Panel considers it unlikely that the Respondent did not have knowledge of this trademark at the time of registration of the disputed domain name.
Additionally, in the Panel’s view, it would be normal for a registrant to do a search for the registration of any domain name, which at the time of the registration of the disputed domain name may certainly have revealed the Complainant’s domain name <enel.com> as already registered and unavailable, leading the Respondent to the Complainant, its reputed trademark, and its official website – and to the available disputed domain name.
The Panel further considers that the cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name is identical to the ENEL mark;
(ii) the ENEL mark is well known internationally and the Complainant operates internationally including the United States and particularly Florida, where the Respondent is located according to the Registrar verification and the information provided in the Response;6
(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;
(iv) according to the evidence provided by the Complainant (not rebutted by the Respondent), the disputed domain name was inactive at the time of filing the Complaint, and the Respondent’s landing page has been linked to the disputed domain name at some stage after the submission of the Complaint;
(v) the Respondent has not provided evidence that its alleged project to use the disputed domain name started prior to the moment when the Respondent had knowledge of the Complaint, and regardless of the timing of its claimed plans, the evidence submitted is not sufficient to lead the Panel to conclude of an intention other than to register a domain name corresponding to the Complainant’s mark.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the Respondent knew or should have known about the Complainant’s prior rights on the ENEL mark, and the disputed domain name was very likely registered targeting this reputed trademark with the intention of obtaining a free ride on the Complainant’s established reputation, seeking to mislead and attract Internet users to the Respondent’s website to increase its traffic, which constitutes bad faith.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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.top> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: September 14, 2021
1 The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s website “www.enel.com”.
2 See, among others, Enel S.p.A. v. Lucky Graziano, enel.website, WIPO Case No. D2021-1014; Enel S.p.A. v. Super Privacy Service LTD c/o Dynadot LLC / Milen Radumilo, WIPO Case No. D2021-1615; Enel S.p.A. v. G.A.C. - Consulenza Informatica, WIPO Case No. D2021-0436; and ENEL S.p.A. v. Liu Jinping, WIPO Case No. DTV2012-0005.
3 The Panel, under its general powers, articulated, inter alia, in paragraph 10 of the Rules, has consulted the Internet archive WayBackMachine to verify the use of the domain name <enel.com>.
4 Paragraph 4(a) of the Policy lists the three elements, which a complainant must satisfy in order to divest a respondent of a domain name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
5 See footnote No.2.
6 The Panel has consulted the Complainant’s website “www.enel.com”.