Westmore · UDRP DecisionEnel.website
The Panel ordered transfer of <enel.website> after finding it identical to the Complainant’s ENEL trademark, finding no rights or legitimate interests on the Respondent’s part, and concluding that the domain was registered and used in bad faith. The bad-faith determination rested principally on the renown and distinctiveness of ENEL, the Respondent’s likely knowledge of the Complainant’s earlier rights, the risk of implied affiliation, and passive holding in the circumstances of the case.
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This decision illustrates how an exact-match domain incorporating a renowned and distinctive mark can satisfy the UDRP even where the domain is not actively used. The Panel relied on the mark’s reputation, the parties’ geographic context, the timing relative to earlier rights, the risk of implied affiliation, and the absence of a substantive rebuttal to conclude that passive holding amounted to bad faith.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Enel S.p.A. v. Lucky Graziano, enel.website Case No. D2021-1014 1. The Parties The Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti, Italy. The Respondent is Lucky Graziano, enel.website, Italy. 2. The Domain Name and Registrar The disputed domain name <enel.website> is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 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 April 8, 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 amended Complaint on April 13, 2021. 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 April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondent sent several email communications. The Center notified the Commencement of Panel Appointment Process on May 6, 2021. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 18, 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 Enel S.p.A (hereinafter referred to as Enel or 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 4 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 GW across 18 states in the Unites States and Canada, and in South America up to the central Andes. 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 mark, which enjoys thorough protection through many registrations thereof worldwide, including in the United States and in Italy. The Complainant is, inter alia , the owner of: Italian trademark registration number 0001299011 for the ENEL trademark, registered on June 1, 2010; and European Union trademark registration number 000756338 for the ENEL device trademark, registered on June 25, 1999. The disputed domain name resolves to a page that contains a folder that leads to a forbidden page. 5. Parties’ Contentions A. Complainant The Complainant claims that: (a) the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark; (b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and (c) the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In fact, the Respondent solely sent a few emails contesting the jurisdiction of the Center to administer this case, also asserting that the present dispute is not a matter of intellectual property. The Respondent also said that he has contacted the criminal authorities in the United States and that he would file several complaints, most notably with the FBI Intellectual Property Division. 6. Discussion and Findings To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Procedural Issue – Jurisdiction of the Center The Respondent has contested the jurisdiction of the Center to administer this case in his email to the Center of April 8, 2021. As set forth in the introduction of paragraph 4 of the Policy, however, the Respondent has submitted to the mandatory administrative proceedings under the UDRP by entering into the registration agreement, which incorporates the UDRP by reference with Tucows Domains Inc. when he registered the disputed domain name. Further, the Panel notes that the Registrar has confirmed that the UDRP applies to this disputed domain name. As such, and as an ICANN accredited provider, the Center has jurisdiction to administer this case. B. Identical or Confusingly Similar The only difference between the disputed domain name and the Complainant’s ENEL trademark is the addition of the generic Top-Level Domain (“gTLD”) suffix “.website”. The Panel considers that the use of the gTLD is irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain name. Therefore, the Panel finds the disputed domain name to be identical to the ENEL trademark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. C. 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 name. The Respondent does not appear to be commonly known by the name “enel” or by 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. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact the disputed domain name does not resolve to an active webpage. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy D. 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 name was registered and has been used in bad faith. Indeed, the Complainant gives several bases for its contention that the disputed domain name was registered and is being used in bad faith. “ENEL” is not a common or descriptive term, but a renowned trademark in and to which the Complainant has demonstrated that it has rights. The Complainant has its headquarters in Rome, Italy, which coincides with the Respondent’s mailing address. The disputed domain name reproduces, without any authorization or approval, the Complainant's registered ENEL trademarks, and this is the only distinctive component of the disputed domain name. Therefore, the fact that the disputed domain name is identical to the Complainant’s ENEL trademark carries with it a high risk of implied affiliation. Section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The disputed domain name was 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 has its mailing address – and on the Internet by the Complainant, who has registered more than 100 domain names in gTLDs and country code Top-Level Domains (“ccTLDs”) 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 a disputed domain name that is identical to the Complainant’s trademark. Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the ENEL trademark and trade name. The bad faith registration and use of the disputed domain name is also affirmed by the fact that the Respondent has not denied, or even responded to, the assertions of bad faith made by the Complainant in this proceeding. Furthermore, the Panel finds that the passive holding of the disputed domain name in the circumstances of the case does not prevent a finding of bad faith registration and use. On the contrary, this Panel agrees with the Complainant’s assertion that in the case of domain names containing well-known earlier marks, passive holding can constitute an indication of bad faith. Here the Panel finds that the Respondent’s passive holding of the disputed domain name constitutes bad faith use and registration (see section 3.3 of the WIPO Overview 3.0 ) as well as a disruption of the Complainant’s business under the paragraph 4(b)(iii) of the Policy. Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain name 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 name <enel.website> be transferred to the Complainant. Fabrizio Bedarida Sole Panelist Date: May 26, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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