WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. Lucky Graziano
Case No. D2021-2221
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Lucky Graziano, Italy.
2. The Domain Name and Registrar
The disputed domain names <myenel.online>, <myenel.website>, and <enelsales.online> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was firstly concerning only the disputed domain name <myenel.online> and 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 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <myenel.online>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 13, 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 16, 2021, also adding the disputed domain name <myenel.website> to the proceedings.
On July 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <myenel.website>. On July 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
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 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on August 25, 2021.
The Center received various email communications from an individual named “Adrian Nita”, between July 21, 2021 and September 3, 2021 to which the Center acknowledged receipt.
On July 22, 2021, the Center received a request from the Complainant to add one more domain name, <enelsales.online> (“Additional Domain Name”).
The Center appointed Edoardo Fano as the sole panelist in this matter on September 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.
On September 2, 2021, the Panel instructed the Center to obtain a registrar’s verification request for the Additional Domain Name from the concerned Registrar. The information of the registrant provided by the Registrar about the Additional Domain Name is the same for the disputed domain names <myenel.online> and <myenel.website>, therefore the Panel accepted to add the Additional Domain Name to the present proceeding.
On September 10, 2021, the Panel issued an Administrative Panel Procedural Order granting the Respondent ten (10) calendar days to answer the Complaint in relation to the Additional Domain Name or to indicate whether it wished to participate to the present proceeding. The Respondent did not submit a Response.
On September 10, 2021, the Center received from the individual named “Adrian Nita” the same email communication already received between July 21, 2021 and September 3, 2021.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Enel S.p.A., an Italian company operating in the field of energy supply and owning several trademark registrations for ENEL, among which the following ones:
- European Union Trade Mark Registration No. 000756338 for ENEL and design, registered on June 25, 1999;
- Italian Trademark Registration No. 0000825734 for ENEL, registered on October 4, 2000;
- Italian Trademark Registration No. 0001299011 for ENEL, registered on June 1, 2010.
The Complainant also operates on the Internet, owning several domain names which include the trademark ENEL, among which “www.my.enel.ro”, and being “www.enel.it”, and “www.enel.com” its main websites.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain names were registered on the following dates: <myenel.online> on November 16, 2020; <myenel.website> on May 28, 2021; <enelsales.online> on February 21, 2021. The website at the disputed domain names <myenel.online> and <myenel.website> is the same index page, while the website at the disputed domain name <enelsales.online> is a blog website.
5. Parties’ Contentions
The Complainant states that the disputed domain names <myenel.online>, <myenel.website>, and <enelsales.online> are confusingly similar to its trademark ENEL.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, it is not commonly known by the disputed domain names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark ENEL is well known in the field of energy supply. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names, with the purpose to intentionally attract, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement. The Complainant also contends that the passive holding of the disputed domain names qualifies as bad faith registration and use.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
As regards the following email communications sent by an individual named “Adrian Nita”, in which his involvement in the present case is denied, the use of an email address associated to the disputed domain name <myenel.online> (i.e., [...]@myenel.online) seems to suggest some kind of connection between this person and at least the disputed domain name <myenel.online>:
“Hello there, As I have communicated to Tucows, they were not authorized to contact WIPO in any regards whatsoever, as it constitutes a breach of the ownership rights, and a serious infringement of the GDPR international standards. As well, there is ongoing a case investigation with ICANN, stemming from a previous Internet fraud action, and also a similar investigation with the FBI, for Internet terrorism against the ownership. This time, the claim of 1,000 USD will be interpreted as a combined extortion attempt, from WIPO and Tucows, against the owners of the domain, which is aggravating and adding up to the previous Internet terrorist attempts from WIPO, with no prerogatives whatsoever in these regards. Any disputed must be dealt with by a court with jurisdiction in these regards, and the ownership has already filed in these regards, a settlement action for the terrorist attempts with enel.website, with the Los Angeles Settlements Court. WIPO can address this court of choice, for any future allegations. Last but not the least I have received only blank extortion emails from WIPO, so I strongly recommend you not to contact this email address again, but forward everything to the email associated with the webhosting for luckygraziano.tel I must warn you that the previous terrorist actions regarding enel.website have led to, minding my status, and that of one of my companies, Lucky One LLC, to add WIPO and some of their accomplices and affiliates, on a certain FBI black list of internet terrorism. Escalating these reckless internet fraud actions from WIPO, will have terrible consequences for Switzerland, in the context of CoVID-20 and the imminent resurgence of the pandemic, and the Delta version. I must say I am terrible compassionate for WIPO, and I wish you to stay away from internet terrorism. Kindly, do not contact me again, and please be aware nothing can be done against the ownership, and the ICANN ownership registry. I am sorry, but I cannot play along WIPO extortion attempt for 1,000 USD. Take care... Lucky One LLC, CA, US PHONE/FAX: (…)”
“Hello there, You are not authorized to contact me on this email address, kindly restrain from any future attempt in these regards. As well, I have received from WIPO suspicious empty emails, with no proceedings whatsoever, regarding online internet fraud allegations, stemming from Tucows. I must warn Tucows that the claims of 1,000 USD will be dealt by my legal representatives as extortion, as there has been a similar fraudulent action in these regards in the past, with Tucows attempting to seize one domain of the ownership. Since there is ongoing a case with ICANN in these regards, please refrain from any other internet and ID fraud, and business theft similar attempts, until a final resolution from ICANN, minding also the previous terrible actions from Tucows and WIPO, are now being investigated by the FBI. I must dismiss any other talks with Tucows or WIPO, and be advised to contact the email address associated with the webhosting for luckygraziano.tel Last but not the least, Tucows is yet to respond the allegations regarding GDPR infringements, as was not authorized to contact WIPO in any regards whatsoever. Bear in mind nothing can be done against the ownership of these domains, and your internet terrorist assimilated actions will have consequences. Best, Lucky One LLC, CA, US PHONE/FAX: […]”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 name have been registered and are being used in bad faith.
A. Preliminary Issue: Addition of a Domain Name to the Proceeding
The Panel’s decision to accept the addition of the Additional Domain Name, <enelsales.online>, to this proceeding is based on consideration of the following:
- The addition of domain names after the filing of a Complaint has been allowed in the past in other UDRP proceedings, e.g., A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172; PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033;
- Paragraphs 10(a), 10(b) and 10(e) of the Rules, entitled “General Powers of the Panel” explicitly provide the following:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”; and
- In the proceeding at issue, the Complainant and the Respondent are the same with respect to the three disputed domain names, the additional and initial Complaints are closely connected as to the factual background in a way that it is expedient to hear and determine them together in order to avoid the potentially varying decisions resulting from separate proceedings and to incur supplemental unnecessary costs for the Complainant.
See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12.2.
B. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark ENEL both by registration and acquired reputation and that the disputed domain names <myenel.online>, <myenel.website>, and <enelsales.online> are confusingly similar to the trademark ENEL.
Regarding the addition of the terms “my” and “sales”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the terms “my” and “sales” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is well accepted that a generic Top-Level Domain (“gTLD”), in this case “.online” and “.website”, may be ignored when assessing the similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are identical to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services; two are being “used” for an index site, and the other for what appears to be a placeholder fabricated blog-type page.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) 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 a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”.
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark ENEL in the field of energy supply is clearly established and especially noting the composition of the disputed domain names (using “my” and “sales”) the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names.
As regards the use in bad faith of the disputed domain names <myenel.online> and <myenel.website>, pointing to an index page, the Panel considers the latter an inactive website and deems that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith. Regarding the disputed domain name <enelsales.online>, pointing to what is apparently supposed to be a blog website, the Panel deems that also this disputed domain name is used in bad faith, with the purpose to intentionally attract, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <myenel.online>, <myenel.website>, and <enelsales.online> be transferred to the Complainant.
Date: September 27, 2021