WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Selvia Tarazano, and Giovanni Cangani

Case No. D2021-2808

1. The Parties

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

The Respondents are Selvia Tarazano, and Giovanni Cangani, Italy.

2. The Domain Names and Registrar

The disputed domain names <enel-energia-reembolso.com>, <enel-energia-rimborso.com>, and <enel-rimborso.com> 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 August 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <enel-energia-reembolso.com>.

On September 22, 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 to the Complainant on September 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

The Complainant submitted a first amendment to the Complaint on September 23, 2021. On September 24, 2021, the Complainant sent an email to the Respondent (copied to the Center), to explore a possible amicable settlement. On October 1, 2021, the Center sent an email to the Parties informing them that in order to explore a possible settlement the Complainant could request a suspension of the proceeding. On October 6, 2021, the Complainant asked the Center to continue with the proceeding and to add two further disputed domain names, <enel-rimborso.com> and <enel-energia-rimborso.com>, to the Complaint.

On October 6, 2021, the Center acknowledged the Complainant’s email and on the same date, the Center sent the Registrar an email to request registrar verification of the last two disputed domain names. On October 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names. The Center sent an email communication to the Complainant on October 7, 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 October 11, 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 Respondents of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on November 30, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 13, 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 and ENEL ENERGIA marks, which enjoy thorough protection through many registrations worldwide, including in Italy where the Respondents apparently reside.

The Complainant is, inter alia, the owner of:

- Italian trademark registration number 0001299011 for the ENEL trademark (figurative), registered on June 1, 2010;
- European Union Trade Mark registration number 000756338 for the ENEL trademark (figurative), registered on June 25, 1999;
- European Union Trade Mark registration number 018204765 for the ENEL ENERGIA trademark (word), registered on June 13, 2020.

The disputed domain names were registered between April 7 and May 19, 2021.

One of the disputed domain name <enel-energia-reembolso.com> resolves to a parking page, whereas the other disputed domain names appear to be inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the ENEL and ENEL ENERGIA trademarks, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

Regarding the Respondents’ identity, the Complainant has requested a consolidation of multiple disputed domain names and Respondents. In support of the above request, the Complainant claims that:

1. All the Respondents are related, to the extent that a sufficient unity of interest exists such that they may essentially be treated as a single domain name holder for the purposes of Policy paragraph 3(c) of the Rules.

2. The disputed domain names were registered by the same Registrar, and are similar in their layout and in their meaning (rimborso/reembolso, i.e. “refund” in Italian and Spanish respectively).

3. The Respondents are based in the same Italian region (Lombardy, in two very close towns).

4. The Respondent also have the same email address structure (namesurname@ as one word, that is, without underscores “_” or full stops “.” between name and surname) and email provider i.e. “namesurname@outlook”.

5. The Complainant claims that they were not able to identify the Registrant identified by the Registrar for the first disputed domain name, i.e. <enel-energia-reembolso.com>, and thus they assume this was registered using a fake Registrant name.

6. Lastly, the Respondents’ Italian phone numbers were registered with the same provider and both of these numbers are inactive.

B. Respondent

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

6. Discussion and Findings

6.1. Consolidation of Multiple Respondents

According to the registration information verified by the Registrar, the disputed domain names were registered by two different physical persons. The Complainant asserts however that the disputed domain names were registered by the same domain name holder, or are at least under common control.

In accordance with the Rules, paragraph 3(c), a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Although the names of the registrants of the disputed domain names are different, the Panel on the evidence available (including, for example, the fact that all the disputed domain names were registered with the same Registrar and within a very short period of time, that the registrants are based in the same region of Italy, that both registrants’ postal addresses appear to be at the very least incorrect, that both registrants’ phone numbers – according to the Complainant’s claim – are inactive, and finally that neither of the Respondents denied the Complainant’s claims) finds that all the disputed domain names identified in the Complaint, on the balance of probability, are registered by the same domain name holder or are at least under common control.

The Panel, therefore concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore accepts the Complainant’s request to address all the disputed domain names in one case under the Rules, paragraphs 10(e) and 3(c). Accordingly, the Respondents will be collectively referred to as the “Respondent” hereinafter.

6.2. Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the ENEL and ENEL ENERGIA trademarks.

The disputed domain names consist of the ENEL ENERGIA and ENEL trademarks combined with the terms “reembolso” and “rimborso”. This Panel agrees with the Complainant’s assertion that the addition of the terms “reembolso” and/or “rimborso” (i.e. “refund” in Spanish and Italian respectively) in the disputed domain names does not prevent a finding of confusing similarity between the Complainant’s trademarks and the disputed domain names.

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 generic Top-Level Domain (“gTLD”) “.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 names. The Respondent does not appear to be commonly known by the names “enel”, “enel energia” or 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. Contrary to this fact, the composition of each disputed domain name is such to carry a risk of implied affiliation to the Complainant, which cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.

Moreover, the Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In fact, one of the disputed domain names resolves to a parking page, whereas the other domain names appear to be inactive. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain names.

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 names were registered and have been 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, both of the physical addresses provided by the Respondent to the Registrar are in Italy.

The disputed domain name were 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 gTLDs and country code Top-Level Domains 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 names that are confusingly similar to the Complainant’s trademarks.

Therefore, it is more likely than not that the Respondent, when registering the disputed domain names, had knowledge of the Complainant’s earlier rights to the ENEL and ENEL ENERGIA trademarks.

Furthermore, one of the disputed domain names resolves to a parking page, two are inactive and all three disputed domain names appear to be passively held.

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 the Complainant. The Panel therefore finds that such holding and use of the disputed domain names 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’ assertions that in the case of domain names containing well-known earlier marks, such conduct can constitute an indication of bad faith. See section 3.3 of the WIPO Overview 3.0.

Here the Panel finds that the Respondent’s current holding of the disputed domain names 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 names 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 names 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 names may be put.

Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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, <enel-energia-reembolso.com>, <enel-energia-rimborso.com>, and <enel-rimborso.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelis
Date: December 27, 2021