WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Contact Privacy Inc. Customer 12410355253, Contact Privacy Inc. Customer 12410355253 / Catiana Souza Oliveira

Case No. D2021-4394

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 12410355253, Contact Privacy Inc. Customer 12410355253, Canada / Catiana Souza Oliveira, Brazil.

2. The Domain Name and Registrar

The disputed domain name <enelxstore-solar.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 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 January 17, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication in English and Italian to the parties on January 17, 2022 regarding the language of the proceeding, as the Complaint had 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 January 19, 2022. The Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint on January 21, 2022.

The Center verified that the Complaint together with the amended 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 February 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2022. The Respondent did not submit any response. Accordingly, the Center sent the notification of the Respondent’s default on March 1, 2022.

The Center appointed Petra Pecar as the sole panelist in this matter on March 9, 2022. 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 a provider and main global operator in the energy market. It is based in Italy and it manages the majority of the Italian electricity and gas distribution network, serving approximately 26 million Italian customers. The Complainant is the parent company of the Enel Group, which operates through its subsidiaries in approximately 32 countries across four continents and brings energy to approximately 64 million customers.

The Complainant is the owner of numerous word, combined, and figurative trademarks for ENEL, ENEL X, and ENEL X STORE, including the following registrations:

- Italian registration No. 0001299011 for the figurative mark ENEL, registered on June 1, 2010;
- European Union registration No. 000756338 for the figurative mark ENEL, registered on June 25, 1999;
- European Union registration No. 015052152 for the figurative mark ENEL, registered on May 13, 2016;
- European Union registration No. 017952705 for the motion mark ENEL, registered on January 9, 2019;
- International registration No. 1322301 for the figurative mark ENEL, registered on February 4, 2016 - designated countries: United States of America, Mexico, Russian Federation, Israel, Colombia, China, Turkey, Morocco, Algeria;
- Italian registration No. 2017000132445 for ENEL X mark, registered on August 21, 2018;
- European Union registration No. 017548322 for ENEL X mark, registered on March 27, 2018;
- International registration No. 1432290 for the figurative mark ENEL X, registered on March 28, 2018, designated countries: Japan, United States of America, Russian Federation, Switzerland, New Zealand, Republic of Korea, India, Australia, Colombia, China; and
- European Union registration No. 18004526 for figurative mark ENEL X STORE, registered on June 13, 2019.

The Complainant is also the owner of numerous domain names containing the trademark ENEL as a part of its Second-Level Domain (SLD). Such domain name registrations include: <enel.com>, <enelx.eu>, <enelx.co>, <enelx.biz>, <enelx.net>, <enelx.com>, <enelx.store>, etc.

The disputed domain name was registered on June 4, 2021. According to the evidence provided by the Complainant, at the time of the submission of the Complaint, the disputed domain name resolved to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar with the Complainant’s marks ENEL, ENEL X, and ENEL X STORE, since it incorporates entirely the Complainant’s registered trademarks ENEL, ENEL X, and ENEL X STORE, along with the descriptive term “solar” (or “store” and “solar” in the case of the ENEL X trademark), closely connected to the Complainant’s business and activities, as well as the generic Top-Level Domain (“gTLD”) suffix “.com”.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name since the Complainant has not authorized the Respondent to register and use the disputed domain name or Complainant’s trademarks nor has the Complainant given its consent for such use of its trademarks. The disputed domain name resolves to a page with no specific contents, which indicates that the site cannot be reached or found. The Complainant further argues that there is no evidence that the Respondent is commonly known by the disputed domain name. Accordingly, the Complainant adds that there is no evidence supporting a bona fide offering of goods or services nor a legitimate noncommercial or fair use associated with the disputed domain name, nor is there any evidence of the Respondent’s preparation to use the disputed domain name in connection with a bona fide offering of goods and services.

Furthermore, the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith. The Complainant argues that the disputed domain name includes the Complainant’s trademarks which are distinctive and well known and that there is no connection between the Complainant’s trademarks and the Respondent. The Complainant provided evidence that the disputed domain name resolves to an inactive page. The Complainant argues that the fact that the disputed domain name comprises the Complainant’s distinctive mark indicates that the Respondent was well aware of the Complainant’s marks when it registered the disputed domain name. The Complainant also argues that the disputed domain name is being passively held by the Respondent, since it is not being used in relation to an active website. The Complainant concludes that passive holding of the disputed domain name indicates the use in bad faith in accordance with well-established criteria determined by previous UDRP panels.

B. Respondent

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

6. Discussion and Findings

6.1. Language of Proceeding

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or 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 Panel to determine otherwise. The language of the registration agreement for the disputed domain name is Italian. The Complainant has requested that English be adopted as the language of the proceeding. The Panel, having considered all relevant circumstances, hereby determines that English shall be the language of this proceeding. The Panel was led to this conclusion by reason of the following factors:

1) The evidence presented by the Complainant demonstrates that the Respondent may have at least sufficient knowledge of English, in particular, based on the evidence that the disputed domain name include the English words “store” and “solar”;

2) The Respondent did not object to the Complainant’s request for English to be the language of the proceeding; and

3) The Complaint has already been submitted in English by the Complainant and no response was received by the Respondent. With such a state of things, there are no foreseeable procedural benefits that would arise from the use of the Italian language within these proceedings. On the contrary, the use of a different language would create an unnecessary burden on the Complainant to provide a translation of documents and would lead to unnecessary delays of these administrative proceedings.

6.2. Discussion

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the case at hand, the Complainant has provided evidence that it has rights in the ENEL, ENEL X, and ENEL X STORE marks on the basis of its multiple trademark registrations throughout the world.

The disputed domain name entirely incorporates the Complainant’s ENEL, ENEL X, and ENEL X STORE trademarks, together with the term “solar”, a hyphen in the middle, and the applicable gTLD suffix “.com”. Because the Complainant’s trademarks ENEL, ENEL X, and ENEL X STORE are recognizable within the disputed domain name, the inclusion of the additional elements does not prevent a finding of confusing similarity. Numerous prior UDRP panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. Moreover, 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.

The addition of the gTLD “.com” is viewed as a standard registration requirement and as such is usually disregarded under the first element of the confusing similarity test. (See section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel holds that the combination of the Complainant’s trademarks ENEL, ENEL X, and ENEL X STORE and the term “solar” together with a hyphen in between, and the applicable gTLD suffix “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.

In the light of all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it has acquired no trademark or service mark rights; or

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

From the evidence provided by the Complainant, this Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name resolves to an inactive webpage displaying a message that the site cannot be reached or found. Further, the Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner. There is no indication that the Respondent is commonly known by the disputed domain name, also taking into the consideration that the Respondent is an individual with no apparent connection with the Complainant’s trademark. The Respondent did not object to the Complainant’s arguments or provide any evidence proving the contrary and thus has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.

In the light of the above and especially having in mind the absence of any response from the Respondent that could shed a light to its potential plans for use of the disputed domain name, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As stressed by many previous UDRP decisions, in such a case, the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1), which Respondent has failed to do in the present administrative proceedings.

The disputed domain name consists of the Complainant’s trademarks ENEL, ENEL X, and ENEL X STORE along with the term “solar”, which is commonly used in the industry in which the Complainant is active. Prior panels have held that where a domain name consists of a trademark plus an additional term, such as terms within a trademark owner’s field of commerce, such composition may trigger an inference of affiliation that cannot constitute fair use, since it effectively suggests endorsement or sponsorship on part of the trademark owner. (See section 2.5.1 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as 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 who is 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 disputed domain name incorporates the Complainant’s trademarks ENEL, ENEL X, and ENEL X STORE with the additional word “solar” which describes the Complainant’s field of business. Having in mind the global presence of the Complainant’s business activities, its trademarks that long predate the registration of the disputed domain name, and the chosen combination of words within the disputed domain name, it seems rather unlikely that the Respondent was not aware of the Complainant’s trademark rights at the time of registration of the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see section 3.2.2 of the WIPO Overview 3.0,) with a deliberate intent to create an impression of an association with the Complainant.

The disputed domain name does not resolve to any active web page. However, the mere fact that the domain name is not actively used does not necessarily prevent a finding of bad faith use of the disputed domain name. In that sense, the Panel has assessed whether the lack of actual use of the disputed domain name can lead to a finding of bad faith against the Respondent. Previous UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of so-called “passive holding” where a disputed domain name resolves to a blank, “coming soon”, or similar page. In accordance with section 3.3. of the WIPO Overview 3.0, the relevant factors that should be taken into account when assessing the existence of bad faith in the passive holding of a domain name are the following: (i) the degree of distinctiveness or reputation of the Complainant’s mark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. It should be borne in mind that it is not required that all the above-listed factors be present in order to establish bad faith use of the disputed domain name.

In the present case, the Panel holds that the majority of factors determined within section 3.3 of the WIPO Overview 3.0 have been established. First, the Complainant’s ENEL, ENEL X, and ENEL X STORE trademarks are distinctive. Secondly, the Respondent has failed to provide any response to the Complaint and has therefore, failed to provide any relevant evidence of actual or contemplated good-faith use of the disputed domain name. Further, the Respondent has also tried to conceal its identity through the use of a privacy service. Finally, it seems rather implausible that there could be any good faith use of the disputed domain name having in mind that it obviously targets the Complainant and its ENEL, ENEL X, and ENEL X STORE trademarks. Bearing in mind the above, the Panel holds that the disputed domain name indeed can be considered to be used in bad faith in accordance with the passive holding doctrine.

In view of the above, the Panel finds that the Complainant has demonstrated that the Respondent registered and used the disputed domain name in bad faith according to 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, <enelxstore-solar.com>, be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: March 23, 2022