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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Contact Privacy Inc. Customer 1249448278 / Daniel

Case No. D2021-2208

1. The Parties

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

Respondent is Contact Privacy Inc. Customer 1249448278, Canada / Daniel, Italy.

2. The Domain Name and Registrar

The disputed domain name <enelmail.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 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 Complainant on July 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 19, 2021.

The Center sent an email communication in English and Italian to the parties on July 16, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Italian. The Complainant submitted a request for English to be the language of the proceeding on July 19, 2021. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2021.

The Center appointed Andrea Mondini as the sole panelist in this matter on August 24, 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

Complainant is one of the largest Italian companies in the energy market serving more than 26 million Italian customers and has subsidiaries in 32 countries across four continents.

Complainant owns numerous trademarks with the element ENEL, inter alia, the Italian Trademark ENEL (figurative) (Registration No. 1299011, registered on June 1, 2010).

Complainant also holds several domain names, including the domain names <enel.it> and <enel.com>.

The disputed domain name was registered on February 15, 2021.

The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to the ENEL trademark in which Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the word “mail” is not sufficient to avoid confusing similarity.

Respondent has no rights or legitimate interests in respect of the disputed domain name. The mark ENEL is associated with Complainant, since it has been extensively used to identify Complainant for decades. Respondent has not been authorized by Complainant to use this trademark.

The disputed domain name was registered and is being used in bad faith because it is obvious that Respondent had knowledge of both Complainant and its well known trademark at the time it registered the disputed domain name, and because the lack of use of a domain name that coincides with a well-known trademark owned by someone else constitutes use in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

In the present case, Italian is the language of the registration agreement. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.

Paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Complainant filed the Complaint in English. On July 19, 2021, the Complainant submitted a request for English to be the language of the proceeding.

Considering that the disputed domain name contains the English word “mail”, which suggests that Respondent targets an English speaking audience, that Respondent used a Registrar located in the United States of America, and that Respondent has not submitted a formal response in Italian, the Panel determines that the language of the proceeding is English.

6.2 Substantive Issues

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the 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.

A. Identical or Confusingly Similar

The Panel is satisfied that Complainant owns a trademark registration for its ENEL trademark.

The Panel notes that the disputed domain name incorporates in its entirety the ENEL trademark. The addition of the word “mail” does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark ENEL.

The first element of paragraph 4(a) of the Policy has been met.

B. Rights or Legitimate Interests

Complainant states it has not authorized Respondent to use the trademark ENEL and that before notice of the dispute, there is no evidence of Respondent’s use, or demonstrable preparation to use, the disputed domain name. The Panel does not see any contrary evidence from the record.

In the view of the Panel, Complainant has succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

Furthermore, the nature of the disputed domain name, comprising Complainant’s trademark and the term “mail”, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

Complainant has shown to the satisfaction of the Panel that its ENEL trademark is well-known in particular in Italy, where Complainant has over 26 million customers and where Respondent is located.

In the view of the Panel, it is inconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name does not resolve to an active website. However, Respondent’s passive holding of the disputed domain name qualifies as use in bad faith in this case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this regard, the Panel notes the reputation of Complainant’s trademark, particularly in Italy where Respondent is located, and Respondent’s failure to submit a response or provide any evidence of actual or contemplated good-faith use. Furthermore, it is inconceivable that Respondent could make any good faith use of the disputed domain name.

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been met.

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 <enelmail.com> be transferred to Complainant.

Andrea Mondini
Sole Panelist
Date: September 2, 2021

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