WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Privacy service provided by Withheld for Privacy ehf / Gargarejo TV

Case No. D2021-3351

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Gargarejo TV, Brazil.

2. The Domain Name and Registrar

The disputed domain name <enelstopwork.live> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 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 October 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 October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.

The Center appointed William R. Towns as the sole panelist in this matter on November 15, 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 based energy company established in 1962. The Complainant today is a major provider of energy throughout the world and has registered its ENEL trademark in the European Union (“EUTM”) and in numerous other countries, including the following:

- EUTM Reg. No. 756338, applied for February 2, 1998, and registered June 25, 1999;

- EUTM Reg. No. 15052152, applied for January 28, 2016, and registered May 13, 2016; and

- International Trademark Reg. No. 1322301, date of registration February 4, 2016, (designating multiple contracting parties).

The Complainant has registered numerous domain names reflecting the Complainant’s ENEL mark, including the domain name <enel.com>, used by the Complainant with its official website. The Respondent registered the disputed domain name on March 11, 2021, according to the Registrar’s WhoIs records. The disputed domain name presently resolves to a landing page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s ENEL mark, which the Complainant asserts is a well-known mark. The Complainant maintains that the disputed domain name is confusingly similar because the disputed domain name incorporates in its entirety the Complainant’s ENEL mark. The Complainant observes that the inclusion of the descriptive words “stop” and “work” in the disputed domain name does not prevent a finding of confusing similarity.

The Complainant expresses further concern that Internet users and consumers inevitably will focus on the “Enel” term and as such inevitably will associate the disputed domain name with the Complainant’s ENEL mark. The Complainant concludes that Internet consumers likely will be deceived by the disputed domain name into believing there is a connection with disputed domain name regarding source, sponsorship, affiliation or endorsement regarding the Complainant and the Respondent.

The Complainant also submits that “Enel stop work” is a Complainant de facto trademark and a policy in which employees are encouraged to stop any activity that may endanger their health and safety or that of others or, similarly, that may cause damage to the environment.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not known and cannot be known by the disputed domain name, as it clearly refers to the ENEL mark in which the Complainant has established rights. According to the Complainant, a data base search reveals no trademark applications or registrations for the disputed domain name. The Complainant emphasizes that the Complainant has neither authorized nor otherwise given consent to the Respondent to register domain names reflecting the Complainant’s ENEL or ENEL-formative marks. The Complainant further asserts that the disputed domain name has been registered and it is being used exploiting the reputation of the Complainant’s trademarks ENEL and unregistered trademark “Enel stop work”, which identifies the Enel policy, in order to attract current and potential Complainant’s client.

The Complainant emphasizes there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further observes that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name.

The Complainant maintains that the disputed domain name was registered and is being used in bad faith. The Complainant reiterates that the Respondent has no rights or legitimate interests respecting the disputed domain name, and notes that the disputed domain name fully reproduces that the Complainant’s well-known ENEL mark. The Complainant reiterates that the Respondent has no connection with the Complainant or the Complainant’s ENEL mark, but is attempting to mislead the Complainant’s customers and is infringing on the Complainant’s ENEL trademarks.

The Complainant reiterates its contention that the Respondent registered and is using the disputed domain name to create a likelihood of confusion with the Complainant’s ENEL mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant further observes to the extent that the Respondent may be passively holding the disputed domain name that bad faith can be found in the circumstances of this case, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant further submits in the attendant circumstances that the composition of the disputed domain name carries with it a risk of implied affiliation, citing Enel S.p.A. v. G.A.C. – Consulenza Informatica, WIPO Case No. D2021-0436.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <enelstopwork.live> is confusingly similar to the Complainant’s ENEL mark, in which the Complainant has established rights through registration and long and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this instance, the Complainant’s ENEL mark is clearly recognizable in the disputed domain name.² The inclusion in the disputed domain name of the words “stop” and “work” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. See, e.g. Instagram, LLC v. Temp name Temp Last Name, Temp Organization, WIPO Case No. D2019-0109. See also Instagram, LLC v. A S, WIPO Case No. D2020-1327. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ TLDs (in this instance <.live>) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ENEL mark. The Respondent notwithstanding registered the disputed domain name, which incorporates the Complainant’s ENEL mark in its entirety. As previously noted, the disputed domain name does not appear to resolve to any active website and has been passively held by the Respondent.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, as previously discussed, has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel further concludes from the record that the Respondent was aware of and had the Complainant’s ENEL mark in mind when registering the disputed domain name. The Respondent has passively held the disputed domain name and has brought forward no credible evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. See WIPO Overview 3.0, section 2.2 and cases cited therein.

Nor has the Respondent brought forth any claim to be making a legitimate noncommercial or fair use of the disputed domain name. A respondent’s use of a domain name cannot be considered “fair” if it falsely suggests affiliation with the trademark owner, and UDRP panels generally have found that a domain name appropriating a complainant’s trademark plus an additional term carries a risk of implied affiliation if it effectively suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035. In this case, the disputed domain name not only incorporates the Complainant’s ENEL trademark but also the Complainant’s “Enel stop work” policy.

In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. Moreover, there is no indication that the Respondent has been commonly known by the disputed domain name at any time within the meaning of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s ENEL mark and “Enel stop work” policy in mind when registering the disputed domain name. The Panel further considers that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant’s trademark rights.

The Respondent’s apparent passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531. The Panel finds such circumstances to be present in this case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name, <enelstopwork.live>, be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: November 30, 2021

¹ See WIPO Overview 3.0, section 1.7.