WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A. v. Maria Garzia
Case No. D2021-2426
1. The Parties
The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Maria Garzia, Italy.
2. The Domain Name and Registrar
The disputed domain name <enelitaly.net> 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 26, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 August 12, 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 August 12, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October 8, 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 companies in the energy market. It manages the greater part 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.
Today the Complainant supplies energy worldwide, with an extensive presence in Europe. The Complainant is also one of the largest energy companies in the Americas, with 71 power generation plants of all types, with a managed capacity of around 6.03 gigawatts across 18 states in the Unites States of America (“United States”) and Canada, and in South America.
The Complainant is the owner of more than 100 domain names containing the trademark ENEL, including <enel.it> and <enel.com>, both of which have been registered in the name of the Complainant since 1996.
The Complainant owns the ENEL mark, which enjoys thorough protection through many registrations worldwide, including in the United States and in Italy.
The Complainant is, inter alia, the owner of:
- Italian trademark registration number 0001299011 for the ENEL trademark (figurative), registered on June 1, 2010; and,
- European Union Trade Mark registration number 000756338 for the ENEL trademark (figurative), registered on June 25, 1999.
The disputed domain name was registered on January 7, 2021.
The disputed domain name resolved to a WordPress blog, which lacked of any content, followed by an account being suspended. Currently, the disputed domain name resolves to a parked free page (courtesy of GoDaddy), where sponsored links unrelated to the Complainant’s business are displayed.
5. Parties’ Contentions
The Complainant claims that:
(a) the disputed domain name is confusingly similar to the Complainant’s trademark;
(b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and
(c) the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the ENEL trademark.
The disputed domain name consists of the ENEL trademark combined with the geographical term “Italy”. This Panel agrees with the Complainant’s assertion that the addition of the geographical term “Italy” in the disputed domain name does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Furthermore, the applicable Top-Level Domain “.net” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “enel” or by any similar name. The Respondent has no connection to or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, initially a limited placeholder blog page, following an account suspension, the disputed domain name resolves to a parking page where sponsored links to third-party websites are displayed. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
The Panel, based on the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
Indeed, the Complainant gives several bases for its contention that the disputed domain name was registered and is being used in bad faith.
“Enel” is not a common or descriptive term, but a renowned trademark, especially in Italy where the Respondent apparently resides. In fact, the physical address provided by the Respondent to the Registrar is in Italy.
The disputed domain name was registered many years after the Complainant’s renowned trademarks were registered. In addition, owing to the substantial presence established worldwide and particularly in Italy – where the Respondent apparently resides – and on the Internet by the Complainant, who has registered more than 100 domain names in generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) worldwide which incorporate the trademark ENEL as a domain name, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when registering the disputed domain name that is confusingly similar to the Complainant’s trademark.
Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the ENEL trademark and trade name.
Furthermore, the disputed domain name resolved to a WordPress blog placeholder page, which lacked of any content, followed by an account being suspended, until this proceeding was started, and currently resolves to a parking page, courtesy of GoDaddy.
Having regard to the distinctiveness of the mark ENEL and in Italy, the Panel is of the view that Internet users would be misled by the disputed domain names into the expectation that they would reach a website operated by Complainant. The Panel therefore finds that such holding and use of the disputed domain name in the circumstances of the case does not prevent a finding of bad faith registration and use. On the contrary, this Panel agrees with previous panelists’ assertion that in the case of domain names containing well-known earlier marks, such conduct can constitute an indication of bad faith.
Here the Panel finds that the Respondent’s current holding of the disputed domain name constitutes bad faith use and registration as well as a disruption of the Complainant’s business.
Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is given by the fact that the Respondent apparently provided incorrect, if not false, details regarding its contact references to the Registrar. In fact, it transpires that the couriered letter sent to the Respondent by the Center was not delivered for this reason.
The bad faith registration and use of the disputed domain name is also affirmed by the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding and the fact that the Panel is unable to determine any plausible good faith use to which the disputed domain name may be put.
Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <enelitaly.net> be transferred to the Complainant.
Date: October 18, 2021