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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A v. Registration Private, Domains by Proxy, LLC / Domain Admin, FindYourDomain.com / Domain Administrator, Diamond Point Enterprises

Case No. D2021-2404

1. The Parties

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

The Respondent is Registration Private, Domains by Proxy, LLC, United States of America (“United States) / Domain Admin, FindYourDomain.com, United States/ Domain Administrator, Diamond Point Enterprises, Thailand1 .

2. The Domain Name and Registrar

The disputed domain name <myenel.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 26, 2021, the Registrar transmitted by email to the Center its verification response 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 27, 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 30, 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 August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 7, 2021. Following this notice, the Respondent sent an informal communication via email directly to the Complainant on September 8, 2021, seeking to reach a mutual settlement of the matter. However, after an exchange of emails on September 9, 2021, September 13, 2021, and September 14, 2021, the parties failed to reach a mutual settlement.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 18, 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 the largest Italian company in the energy market. With over 46 GW of installed capacity, it manages the majority of the Italian electricity and gas distribution network serving more than 26 million Italian customers. The Complainant is part of a corporate group which operates in more than 32 countries across 4 continents, with a net installed capacity of around 86 GW and networks covering about 2.2 million kilometers, and brings energy to around 64 million customers.

The Complainant is the owner of numerous trade mark registrations for the ENEL mark in various jurisdictions, including, inter alia, the ENEL trade mark (Reg. No. 908118341) registered in Brazil on January 31, 2017 and the ENEL international trade mark (Reg. No. 1322301) registered on February 4, 2016 covering multiple jurisdictions including Mexico, China, Turkey, and the United States. The Complainant also operates and owns more than 100 domain names containing the ENEL mark, including <enel.com>.

The Disputed Domain Name was registered by the Respondent on March 16, 2021. The Disputed Domain Name currently resolves to a website consisting of a directory of multiple pay-per-click links to secondary pages of other businesses.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is almost identical and confusingly similar to the Complainant’s ENEL trade mark, with the addition of the term “my”.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its ENEL trade mark. The Respondent is not commonly known by the Disputed Domain Name. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

(c) The Respondent has registered the Disputed Domain Name primarily for the purpose of attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s ENEL mark. The Respondent’s mere act of typosquatting presents evidence of bad faith. The Respondent must have been aware of, or had otherwise been willfully blind to, the Complainant’s rights in its ENEL trade marks when registering the Disputed Domain Name. As such, the Disputed Domain Name was registered, and is being used, in bad faith.

B. Respondent

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

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ENEL trade mark, based on its various trade mark registrations.

It is well established that in making an enquiry as to whether a domain name is identical or confusingly similar to a trade mark, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s ENEL trade mark in its entirety with the addition of the term “my”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The mere addition of the prefix “my” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s ENEL trade mark. The nature of such additional term may however bear on the assessment of the second and third elements. See section 1.8 of the WIPO Overview 3.0.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ENEL trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

The Complainant also asserted that it has unregistered rights in the MYENEL mark which is identical to the Disputed Domain Name. However, given the finding made by the Panel above, it would be unnecessary for the Panel to consider this specific assertion further.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel finds that the Complainant has not authorised the Respondent to use the ENEL trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the ENEL trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not responded to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. Given that the Disputed Domain Name resolves to a parked page consisting of pay-per-click links to third party websites offering products and services, the Panel agrees with the Complainant that such use of the Disputed Domain Name by the Respondent cannot be regarded as legitimate noncommercial or fair use. Such use of the Disputed Domain Name together with the nature of the Disputed Domain Name (see section 2.5.1 of the WIPO Overview 3.0) may give a false impression that the Disputed Domain Name is related to the Complainant and is thus capable of misleading third parties.

In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.

The Complainant’s ENEL trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “enel” are the Complainant’s official website and several third party websites making references to the Complainant’s products and services. Therefore, taking this into consideration together with the fact that the Disputed Domain Name incorporates the Complainant’s ENEL trade mark in its entirety with the addition of the term “my”, the Respondent must have been aware of the Complainant and its rights in the ENEL trade mark when registering the Disputed Domain Name.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains the Complainant’s ENEL trade mark in its entirety (with the addition of the term “my”) and is being used by the Respondent to host a parked page that contains links to third-party websites offering other products and services. Any use of the Disputed Domain Name may therefore mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights; and

(iii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193).

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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, <myenel.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: November 1, 2021

1 The Panel notes that Domain Admin, FindYourDomain.com has indicated that the Disputed Domain Name was registered on behalf of a client, i.e., Domain Administrator, Diamond Point Enterprises.

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