WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Contact Privacy Inc. Customer 1249186223 / Mario

Case No. D2021-2279

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1249186223, Canada / Mario, Italy.

2. The Domain Name and Registrar

The disputed domain name <enelenergies.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 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 15, 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 amendment to the Complaint on July 20, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2021.

The Center appointed Anna Carabelli as the sole panelist in this matter on September 2, 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 energy companies and one of the main global operators in the energy market. It manages the majority 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 four continents and brings energy to around 64 million customers.

The Complainant owns several trademark registrations for ENEL and ENEL ENERGIA throughout the world (Annexes 14 and 15 to the Complaint), including the following:

- Italian trademark registration No. 0001299011 for the ENEL figurative trademark, registered on June 1, 2010;
- Italian trademark registration No. 0000825734 for the ENEL trademark, registered on October 4, 2000;
- European Union trademark registration No. 000756338 for the ENEL device trademark, registered on June 25, 1999;
- European Union trademark registration No. 015052152 for the ENEL trademark, registered on May 13, 2016;
- European Union trademark registration No. 018204765 for the trademark ENEL ENERGIA, registered on June 13, 2020;
- International trademark registration No. 1322301 for the ENEL trademark, registered on February 4, 2016 - designated countries: China, Colombia, Algeria, Israel, Morocco, Mexico, Russian Federation, Turkey, United States of America.

The Complainant is the owner of numerous domain names containing the trademarks ENEL (Annex 16 to the Complaint), including <enel.it>, <enel.com> and <enelenergia.pl> and <enelenergie.fr> associated with various country top-level domains.

The Complainant is or has been an official partner and/or sponsor of some internationally known sporting events.

The disputed domain name was registered on January 21, 2021 and at the time of filing the Complaint, the disputed domain name resolved to a webpage with no specific contents, displaying the message that the site cannot be reached or found. At the time of the Decision, the disputed domain name does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant asserts and contends that:

(a) the disputed domain name is confusingly similar with the trademarks ENEL and ENEL ENERGIA in which the Complainant has rights, since: (i) it incorporates the whole Complainant’s company name and trademark ENEL and (ii) it is conceptually identical to, and confusingly similar from the visual/phonetic points of view with the Complainant’s trademark ENEL ENERGIA.

(b) The Respondent has no rights or legitimate interests in the disputed domain names since: (i) the Complainant has not authorized or somehow given consent to the Respondent to register and use the disputed domain name, (ii) the disputed domain name resolve to a page with no specific contents, which indicates that the site cannot be reached or found, (iii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, nor is there any evidence of the Respondent’s preparation to use the disputed domain name in connection with a bona fide offering of goods and services.

(c) The disputed domain name was registered in bad faith since the Complainant’s trademark are distinctive and well known. The fact that the disputed domain name comprises the Complainant’s distinctive trademark indicates that the Respondent was well aware of the Complainant’s trademark when registering the disputed domain name. The disputed domain name is also used in bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the Policy. In this connection, the Complainant highlights that the disputed domain name is not being used in relation to an active website and is therefore being passively held by the Respondent, thus also causing a likelihood of confusion as to the source, sponsorship and affiliation of its website.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademarks ENEL and ENEL ENERGIA based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 14 to the Complaint.

The disputed domain name entirely incorporates the Complainant’s mark ENEL and this is a sufficient element to establish confusing similarity, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409).

The disputed domain name also incorporates the Complainant’s trademark ENEL ENERGIA with a minor and subtle variation, consisting of replacing the final letter “a” with the letter “e” with the addition of an extra letter “s” (enelenergies). In the Panel’s view, this minor variation does not prevent a finding of confusing similarity. The ENEL ENERGIA trademark of the Complainant is recognizable in the disputed domain name.

The addition of the Top-Level-Domain (“TLD”) “.com”, “.net”, and “.cloud” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. (See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)).

In the light of all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademarks. The Complainant asserts that the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name. In this connection, the Complainant has provided evidence that the disputed domain name resolves to a page displaying the message that the site cannot be reached or found.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As stressed by many previous UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1).

Furthermore, the replacement of the final letter “a” with the letter “e” with the addition of an extra letter “s” to the Complainant’s trademarks ENEL and ENEL ENERGIA is likely to be perceived by Internet users as suggesting a false affiliation with the Complainant, which cannot confer rights or legitimate interests to the Respondent.

By not submitting a Response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.

Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith.

The disputed domain name incorporates the Complainant’s trademarks ENEL and ENEL ENERGIA and was registered long after these trademarks became well known. Given the distinctiveness and well-established reputation of the Complainant’s trademarks (also recognized in Enel S.p.A. v. G.A.C. - Consulenza Informatica, WIPO Case No. D2021-0436 and in Enel S.p.A. v. Lucky Graziano, enel.website, WIPO Case No. D2021-1014) it is not conceivable that the Respondent did not have in mind the Complainant’s trademarks when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant.

As regards the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. As recorded in section 3.3 of WIPO Overview 3.0, while panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In the circumstances of this case and in light of the considerations set out in paragraphs A) and B), the Panel finds that the passive holding of the disputed domain name qualifies as bad faith use.

In view of the above, the Panel finds that the Complainant has demonstrated that the Respondent registered and used the disputed domain name in bad faith according to 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 name <enelenergies.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: September 14, 2021