WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Contact Privacy Inc. Customer 1249590995 / Contact Privacy Inc. Customer 1249590994 / Antono

Case No. D2021-3363

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1249590995, Canada / Contact Privacy Inc. Customer 1249590994, Canada / Antono, Italy.

2. The Domain Names and Registrar

The disputed domain names <enelenergiaspa.com> and <enelspaenrgia.com> are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names 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 sent an email communication in English and Italian to the parties on October 12, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Italian. The Complainant submitted a request for English to be the language of the proceeding on October 12, 2021. The Respondent did not comment on the language of the proceeding.

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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2021.

The Center appointed Andrea Mondini as the sole panelist in this matter on December 5, 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 serving more than 26 million Italian customers and has subsidiaries in 32 countries across four continents.

The Complainant owns numerous trademarks with the element ENEL, inter alia, the Italian Trademark ENEL (figurative) (Registration No. 1299011, registered on June 1, 2010) and the European Union Trade Mark registration ENEL ENERGIA (Registration No. 18204765, registered on June 13, 2020).

The Complainant also holds several domain names, including the domain names <enel.it> and <enel.com>.

The disputed domain name names <enelenergiaspa.com> and <enelspaenrgia.com> were both registered on March 1, 2021.

The disputed domain name <enelspaenrgia.com> resolves to an inactive site.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain names are confusingly similar to the ENEL and the ENEL ENERGIA trademarks in which the Complainant has rights, because they incorporate these trademarks in their entirety, and the addition of the word “spa” (which in Italian stands for “società per azioni” which means joint stock corporation) and the misspelling “enrgia” instead of the Italian word “energia” are not sufficient to avoid confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The marks ENEL and ENEL ENERGIA are associated with the Complainant, since the trademark ENEL has been extensively used to identify the Complainant and its services in the energy sector for decades. The Respondent has not been authorized by the Complainant to use these trademarks and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain names in connection with a bona fide offering of goods and services.

The disputed domain names were registered and are being used in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark ENEL at the time it registered the disputed domain names, and because the lack of use of a domain name that coincides with a well-known trademark owned by someone else constitutes use in bad faith. In particular, the fact that the disputed domain name <enelenergiaspa.com> resolves to a warning that the site has been blocked by Firefox as it may deceive users by trying to convince them to install software or reveal personal information such as passwords and credit card numbers, is evidence of use in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

In the present case, Italian is the language of the registration agreement. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.

Paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

The Complainant filed the Complaint in English. On October 12, 2021, the Complainant submitted a request for English to be the language of the proceeding. The Respondent did not comment on this request.

Considering that the Respondent used a Registrar located in the United States of America and that the Respondent has not submitted a formal response in Italian and did not comment on the language of the proceeding, the Panel determines that the language of the proceeding is English.

6.2 Substantive Issues

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain names are identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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 Panel is satisfied that the Complainant owns trademark registrations for its ENEL and ENEL ENERGIA trademarks.

The Panel notes that the disputed domain names incorporate the ENEL trademark in its entirety. The disputed domain names also conceptually incorporate the ENEL ENERGIA trademark. The addition of the word “spa” (which in Italian stands for “società per azioni” which means joint stock corporation) and the misspelling “enrgia” instead of the Italian word “energia” do not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

For these reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s marks ENEL and ENEL ENERGIA.

The first element of paragraph 4(a) of the Policy has been met.

B. Rights or Legitimate Interests

The Complainant states it has not authorized the Respondent to use the trademarks ENEL and ENEL ENERGIA and that before notice of the dispute, there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain names. The Panel does not see any contrary evidence from the record.

In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names.

Furthermore, the nature of the disputed domain name <enelenergiaspa.com>, comprising the Complainant’s trademarks and the term “spa” (società per azioni), carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

The Complainant has shown to the satisfaction of the Panel that its ENEL trademark is well-known in particular in Italy, where the Complainant has over 26 million customers and where the Respondent is located.

In the view of the Panel, it is inconceivable that the Respondent could have registered the disputed domain names without knowledge of the Complainant’s well-known trademark, particularly considering that the Complainant is active in the energy sector and that the disputed domain names contain the word “energia” and the misspelling “enrgia” respectively. In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name <enelenergiaspa.com> resolves to a warning that the site has been blocked by Firefox as it may deceive users by trying to convince them to install software or reveal personal information such as passwords and credit card numbers. The fact that this webpage was blocked an independent third party demonstrates that it represents a risk of use of this disputed domain name for phishing, identity theft or malware distribution (WIPO Overview 3.0, section 3.4). The Panel therefore holds that the disputed domain name <enelenergiaspa.com> is being used in bad faith.

The disputed domain name <enelspaenrgia.com> resolves to an inactive site. However, the Respondent’s passive holding of this disputed domain name qualifies as use in bad faith in this case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this regard, the Panel notes the reputation of the Complainant’s trademarks, particularly in Italy, and the Respondent’s failure to submit a response or provide any evidence of actual or contemplated good-faith use. Furthermore, it is inconceivable that the Respondent could make any good faith use of the disputed domain names.

The Panel thus finds that the disputed domain names were registered and are being used in bad faith.

The third element of paragraph 4(a) of the Policy has been met.

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, <enelenergiaspa.com> and <enelspaenrgia.com> be transferred to the Complainant.

Andrea Mondini
Sole Panelist
Date: December 10, 2021