WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enel S.p.A v. Withheld for Privacy Purposes Privacy Service Provided by Withheld for Privacy ehf / William Rolph
Case No. D2021-3088
1. The Parties
The Complainant is Enel S.p.A, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf, Iceland / William Rolph, Afghanistan.
2. The Domain Name and Registrar
The disputed domain name <openpowers.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 September 22, 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 September 22, 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 October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 12, 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 operates on the energy market and manages the majority of the Italian electricity and gas distribution network serving more than 26 million Italian customers. It is the parent company of the Enel Group, which operates through its subsidiaries 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 serving around 64 million customers. The Complainant is listed on the Milan Stock Exchange since 1999 and has the largest number of shareholders of any Italian company, with 1.1 million retail and institutional investors. 13 other Enel Group companies are listed on stock exchanges in Italy, Spain, the Russian Federation, Argentina, Brazil, Chile and Peru. In 2018, Enel Group posted revenues of approximately EUR 76 billion, EBITDA of more than EUR 16 billion, and net ordinary income of almost EUR 5 billion. In 2020, it was ranked 87th in the Fortune Global 500 List, and in 2018 it was ranked 28th in the Fortune Changed the World List. In 2017, Enel was ranked 19th in World’s Best Employers by the Forbes magazine.
In 2016, Enel Group carried out a major rebranding of its global corporate brand, and adopted a new vision and brand identity for itself called OPEN POWER.
The Complainant is the owner of the Italian trademark OPEN POWER with registration No. 2019000094095, registered on September 23, 2020 for goods and services in International Classes 9, 11, 35, 37, 39, 40 and 42 (the “OPEN POWER trademark”).
The disputed domain name was registered on April 7, 2021. It is inactive.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the OPEN POWER trademark, because it incorporates the trademark entirely with the addition of the letter “s”. According to the Complainant, such difference does not distinguish the disputed domain name, and Internet users will associate it with the OPEN POWER trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not known by the disputed domain name, and the Complainant has not authorized the Respondent to register and use the disputed domain name. According to the Complainant, the disputed domain name has been registered and is being used to exploit the reputation of the OPEN POWER trademark to attract current and potential clients of the Complainant. The Complainant adds that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services, because when an Internet user attempts to open the associated website, the Internet browser displays a warning that there is a high risk of phishing.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent had knowledge of the Complainant’s earlier rights in the OPEN POWER trademark when registering the disputed domain name, and is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of this trademark to attract Internet users to the website related to the disputed domain name by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which is suspected to have been used for phishing purposes.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
The Respondent has, however, not submitted a Response or disputed the Complainant’s contentions and evidence in this proceeding.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it is the owner of the OPEN POWER trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of a domain name for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The disputed domain name incorporates the OPEN POWER trademark in its entirety together with the letter “s”. The OPEN POWER trademark remains easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the OPEN POWER trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent is not known, and cannot be known by the disputed domain name, which clearly refers to the Complainant’s trademark OPEN POWER, the Respondent has no rights or legitimate interests in the disputed domain names, because the Complainant has not authorized it to use the OPEN POWER trademark, and the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, but has used it for phishing purposes. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response. It has not provided any arguments in support of the existence of any rights or legitimate interests in the disputed domain name, and has not denied the allegations of the Complainant or disputed the evidence that it has brought forward.
The disputed domain name incorporates the OPEN POWER trademark, which was registered earlier, and the evidence in the case file shows that the website at the disputed domain name displays a warning for a potential risk of phishing.
In view of the above, and in the lack of any arguments or evidence to the contrary, the Panel concludes that it is more likely than not that the Respondent has targeted the OPEN POWER trademark with the registration of the disputed domain name in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain name Internet users looking for the Complainant. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights and or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain name is confusingly similar to the OPEN POWER trademark and was registered after the Complainant started using and registered this trademark. The disputed domain name resolves to a website that displays a warning for the risk of phishing. The contact details of the Respondent provided to the Registrar are obviously false, as they suggest that the city of Moscow is located in Afghanistan.
In view of the above and in the lack of a denial by the Respondent of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondent must have been well aware of the goodwill of the Complainant’s OPEN POWER trademark when it registered the disputed domain name, and that it is more likely that the Respondent registered and used it in an intentional attempt to take advantage of the confusing similarity between the Complainant’s trademark, and the disputed domain name, which is likely to have been used for illegitimate phishing purposes.
In view of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <openpowers.com>, be transferred to the Complainant.
Date: November 26, 2021