WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. Domains By Proxy, LLC / Torres Yoan, Yoan
Case No. D2021-2405
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Domains By Proxy, LLC, United States of America / Torres Yoan, Yoan, Swaziland 1 .
2. The Domain Name and Registrar
The disputed domain name <myenel.org> is registered with Wild West Domains, 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 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 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 28, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2021.
The Center appointed Isabelle Leroux as the sole panelist in this matter on September 7, 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 an Italian company specialized in the energy market. It is the parent company of the Enel Group which operates in more than 32 countries around the world and supplies to about 64 million customers globally in particular in Europe and Africa.
It is also the owner of numerous trademarks containing the sign “Enel”, which is also the trade name of the Complainant’s group, in particular:
- Italian trademark ENEL, No. 0001299011, registered on June 1, 2010 and duly renewed, designating products and services in 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42;
- Italian trademark ENEL, No. 0000825734, registered on October 4, 2000 and duly renewed, designating products and services in 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42;
- European Union trademark , No. 000756338, registered on June 25, 1999 and duly renewed, designating products and services in 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42;
- European Union trademark , No. 15052152, registered on May 13, 2016, designating products and services in classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41 and 42.
The ENEL trademarks are extensively used by the Complainant as a sponsor of several major international sports events, such as MotoE World Cup, Formula E World Championship and Giro d’Italia (Tour of Italy) cycling race, thanks to which, the ENEL trademarks have established an international renown beyond the energy sector.
The Complainant also owns numerous domain names containing the trademark ENEL, in particular, <enel.com> and <enel.it> associated with its official website.
The Complainant uses the term “MyEnel” to designate the user space of its clients, for example at the addresses “my.enel.ro/#!Login” and “www.enel.it/it/enel-id/login”.
The disputed domain name was registered on December 5, 2020 by the Respondent through a proxy service. According to the information received from the Registrar, the Respondent is an individual located in Wetzikon, Shiselweni. The Panel notes that the address of the Respondent seems to be wrong since Wetzikon is a city in Switzerland whereas Shiselweni is an African region.
The disputed domain name is not active and resolves to a default page of the navigator indicating “the address is unreachable”.
5. Parties’ Contentions
The Complainant claims that:
(a) the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark since it incorporates the company name and the trademark of the Complainant in its entirety; in addition, given the well-known character of the Complainant’s trademark, Internet user will inevitably focus their attention on the term “Enel” in the disputed domain name, which creates a confusion of association with the Complainant;
(b) the Respondent has no rights or legitimate interests in the disputed domain name since the Complainant has never authorized nor given its consent to the Respondent for registering and using the disputed domain name; further, there is no evidence of any use or demonstrable preparations to use on the disputed domain name by the Respondent in connection to a bona fide offering goods or services, as the Respondent is not making any use and is only passively holding the disputed domain name;
(c) the Respondent has registered and is using the disputed domain name in bad faith given the following factors: i) the disputed domain name does not lead to any active site, thus lacks of any good faith use; ii) as the term “Enel” is not a common term and is the name of the well-known trademark of the Complainant, the registration of the disputed domain name containing such term is not of coincidence, especially since it is the only distinctive part of the disputed domain name.
Therefore, according to the Complainant, the Respondent had knowledge of the Complainant’s trademark and the trade name when registering the disputed domain name, and the Respondent is unfairly and intentionally taking advantage of the reputation and distinctiveness of the Complainant’s earlier rights in order to mislead Internet users.
Finally, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that a domain name registered by a respondent be transferred to the complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2) the respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it holds trademark rights in the term ENEL that is fully reproduced in an identical manner in the disputed domain name.
The addition of the term “my” does not prevent a finding of confusing similarity as the Complainant’s ENEL trademark is recognizable in the disputed domain name. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s ENEL trademarks for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Hence after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.
In this case, the Respondent has not filed any Response but the Complainant brings forward the following elements:
- No license or authorization has been granted by the Complainant to the Respondent;
- It has no relationship whatsoever with the Respondent;
- There is no indication that the Respondent is known under the disputed domain name.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not proved otherwise.
Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
First of all, the Complainant has provided evidence that the disputed domain name was registered after the registration of the ENEL trademarks that have gained an international well-known notably through its commercial and promotional efforts, which has furthermore been recognized in previous UDRP decisions (Enel S.p.A. v. Antonio of Santis, ANTONIO DE SANTIS, WIPO Case No. D2021-1260; Enel S.p.A. v. Lucky Graziano, enel.website, WIPO Case No. D2021-1014).
Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the Complainant’s ENEL trademarks at the time of the registration of the disputed domain name, which incorporates the ENEL trademarks in its entirety, especially as the term “Enel” does not have any specific signification.
In addition, it is worth noticing that the postal address provided by the Respondent seems to be incorrect as the city of Wetzikon is not in Shiselweni, which is an African region. In this regard, previous panels have found that the provision of incorrect data is an indication of bad faith registration (Teleshopping v. Bendeler, WIPO Case No. D2004-0776). The Panel is of the opinion that the Respondent’s failure to provide correct data is an inference of bad faith registration.
Further, the Panel notes that the combination of the term “My” and the term ENEL refers to the user space of the Complainant’s clients, a service allowing them to connect to the website or user account of ENEL, and may further strengthen the confusion as the Complainant uses the term “MyEnel” to designate the user space of its clients, for example at the addresses “my.enel.ro/#!Login” and “www.enel.it/it/enel-id/login”.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name, the Complainant has provided evidence that the disputed domain name appears to be inactive.
In instances where there is no apparent active use of a domain name, UDRP panels will apply the passive holding doctrine by taking into consideration the totality of the circumstances of a specific case, as outlined in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the present case, the Panel finds that the non-use of the disputed domain name does not prevent a finding of bad faith, in particular given the following factors:
- the high distinctiveness and the worldwide reputation of the Complainant’s ENEL trademarks;
- the failure of the Respondent to submit a response;
- the Respondent’s concealing its identity (the disputed domain name was registered through a proxy service and the postal address provided by the Respondent to the Registrar is incorrect).
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
Consequently, the Panel finds that the disputed domain name was registered and used in bad faith, so that the third and final element of the Policy is met.
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.org> be transferred to the Complainant.
Date: September 21, 2021
1 The Panel notes that the WhoIs displays an incorrect address and the registrar did not disclose the country of the Respondent