WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A v. Contact Privacy Inc. Customer 1248982391 / Mario Garazia
Case No. D2021-2427
1. The Parties
The Complainant is Enel S.p.A, Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Contact Privacy Inc. Customer 1248982391, Canada / Mario Garazia, Italy.
2. The Domain Name and Registrar
The disputed domain name <enelitalia.net> 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 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 July 30, 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 2, 2021.
On July 30, 2021 the Center sent, in both English and Italian, an email indicating the Language of the Registration Agreement to be Italian. On August 2, 2021 the Complainant requested for the Language of the Proceedings to be English. The Respondent did not comment.
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 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 10, 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 up to the central Andes.
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, registered on June 1, 2010; and,
- European Union Trade Mark registration number 000756338 for the ENEL device trademark, registered on June 25, 1999.
The disputed domain name was registered on December 28, 2020.
The disputed domain name resolves to a page where the warning message “Deceptive site ahead” is displayed, together with an explanation that the page has been blocked by the browser (Firefox) owing to the fact that it could attempt to deceive or convince Internet users to install software or to reveal personal information such as passwords and credit card numbers.
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 trade mark 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. Procedural Issue – Language of the proceedings
The Complaint has been submitted in English. Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel.
In the present case the language of the Registration Agreement is Italian. The Complainant has requested to proceed in English, and the Respondent has not commented on this request.
The Panel notes that the Respondent’s email and physical address appear to be non-existent or incorrect, and in addition, when trying to connect to the Respondent’s website a “security error message”, i.e. “Deceptive site ahead”, is displayed. Moreover, the Respondent has neither responded to nor denied the Complainant’s supposition that the disputed domain name was registered using fake contact details. Finally, the Respondent, although having been notified by the Center in English and in Italian, has neither commented on nor opposed the Complainant’s request to proceed in English.
For all the above reasons, the Panel accepts the Complainant’s request and determines that the language of this proceeding will be English, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
B. 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 “italia”. This Panel agrees with the Complainant’s assertion that the addition of the geographical term “italia” 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”.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. 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, the disputed domain name resolves to a webpage where a security message is displayed warning of a potential scam. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain name.
Furthermore, the disputed domain name reproduces, without any authorization or approval, the Complainant’s registered ENEL trademarks. The fact that the disputed domain name incorporates the Complainant’s ENEL trademark and a related term carries with it a risk of implied affiliation. Section 2.5.1 of the WIPO Overview 3.0.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy
D. 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. As previously discussed, there are reasons to believe that the Respondent’s contact details may be fake. In any case, 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 Panel finds that the use of the disputed domain name in the circumstances of the case supports an inference of bad faith registration and use.
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 <enelitalia.net> be transferred to the Complainant.
Date: September 22, 2021