WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A v. Arad Hoyzma

Case No. D2021-2339

1. The Parties

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

The Respondent is Arad Hoyzma, Israel.

2. The Domain Names and Registrar

The disputed domain names <enelenergias.net> and <enelenergias.org> are registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 21, 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 22, 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 26, 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 August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2021.

The Center appointed Mario Soerensen Garcia 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 Enel S.p.A., parent company of the Enel Group and one of the largest Italian companies in the energy market. The Enel Group operates through its subsidiaries in more than 32 countries, employing nearly 70,000 people and bringing energy to around 64 million customers.

The Complainant owns several trademark registrations for the trademark ENEL and ENEL ENERGIA, including the following:

-Italian registration No. 1299011 for ENEL, registered on June 1, 2010.

-European Union Trade Mark No. 15052152 for ENEL, registered on May 13, 2016.

-European Union Trade Mark No. 18204765 for ENEL ENERGIA, registered on June 13, 2020.

-International registration (designating different countries including Israel) No. 1322301 for ENEL, registered on February 4, 2016.

The Complainant is also the owner of a number of different domain names containing its trademark ENEL, such as <enel.it> and <enel.com>.

The disputed domain names were registered on April 25, 2021 and resolve to parking pages.

5. Parties’ Contentions

A. Complainant

The Complainant states that it owns trademark registrations in several jurisdictions for the trademark ENEL and ENEL ENERGIA as well as registrations for many domain names comprising the trademark ENEL, such as <enel.it> and <enel.com> and that the disputed domain names reproduce the Complainant’s trademarks and trade name.

According to the Complainant, the Respondent has intentionally registered the disputed domain names to lead consumers to think that they belong to or are related to the Complainant.

According to the Complainant, the Respondent is not authorized to register or use the disputed domain names and has no rights or legitimate interests in the disputed domain names.

The Complainant argues that the Respondent is not commonly known by the disputed domain names and it has not acquired any trademark rights related to the disputed domain names.

In addition, the Complainant argues that due to its reputation, the Respondent had knowledge or at any rate exercised a willful blindness of the Complainant’s rights in and to the well-known ENEL trademarks and that the Respondent’s intention when registering the disputed domain names was to prevent the Complainant from exercising its legitimate rights over the well-known trademark ENEL. The Complainant adds that the disputed domain names do not resolve to active websites.

Finally, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant has rights in the trademarks ENEL and ENEL ENERGIA, which predate the registration of the disputed domain names. The Panel finds that the Complainant has trademark rights for purposes of the Policy.

The disputed domain names comprise the trademarks ENEL and ENEL ENERGIA in their entirety.

As numerous prior UDRP panels have already recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of the elements “energias” or “s” to the trademarks ENEL or ENEL ENERGIA, respectively, does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the ENEL trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademark ENEL.

There is no evidence that the Respondent is commonly known by the disputed domain name (see World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

There is nothing in the record to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent could have produced evidence to show that he has been commonly known by the disputed domain names but he preferred not to respond the Complaint.

The Panel finds that the use of the disputed domain names, which incorporates the ENEL trademarks, does not correspond to a bona fide use of domain names under the Policy.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent has not rebutted.

Furthermore, the nature of the disputed domain names carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e. the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark ENEL is registered in several countries, including Israel where the Respondent is located and has been used for a long time around the world. It is indeed considered as a well-known trademark and is easily recognized by consumers in different jurisdictions.

The disputed domain names are comprised by the trademark ENEL in its entirety including the term “energia” (“energy” in English), with the addition of the letter “s”, which in some languages can represent the plural form of the word “energia”. Also, the Respondent has no rights or legitimate interests in the disputed domain names.

Besides being well-known, the mark ENEL is distinctive and has no meaning. Thus, a domain name that comprises such a mark is undoubtedly suggestive of the registrant’s bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. In addition, the Panel notes that the disputed domain names include the descriptive term “energias”, which in this case may serve as additional evidence of the registration of the disputed domain names in bad faith, considering that “energia”, represents the Complainant’s business segment and is incorporated in the Complainant’s trademark ENEL ENERGIA.

Although the disputed domain names merely resolve to registrar parked pages, this does not prevent a finding of bad faith under the doctrine of passive holding.

The Complaint demonstrates that there is no other reason for the use and registration of the disputed domain names than to take advantage of the fame of the Complainant’s trademarks, with the intent to deceive Internet users. The Respondent obviously knew of the Complainant’s mark when it registered the disputed domain names.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “[t]he failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

Furthermore, noting inter alia the above-referenced nature of the disputed domain names, being confusing similar to the Complainant’s ENEL trademark and nearly identical to the Complainant’s ENEL ENERGIA trademark, the Panel finds it implausible that the disputed domain names could be put to any good faith use that would not be inherently misleading by effectively impersonating or falsely suggesting sponsorship or endorsement by the Complainant.

Accordingly, this Panel finds that the Respondent’s intention of taking undue advantage of the trademark ENEL has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain names have been registered and are being used in bad faith.

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, <enelenergias.net> and <enelenergias.org>, be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: September 16, 2021