Complainant is Enel S.p.A, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
The disputed domain name <enelbrasil.com> (the “disputed domain name”) is registered with Media Elite Holdings Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 16, 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 the same day.
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 Respondent of the Complaint, and the proceedings commenced on September 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 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.
Complainant, together with its subsidiary and affiliate companies (collectively “Complainant”) is an energy provider, based in Italy. Since decades prior to the registration of the disputed domain name, Complainant has offered its energy services and products globally in connection with its ENEL mark. In this regard, Complainant owns numerous trademark registrations for the ENEL mark. These include, among others, European Union Registration No. 756338 (registered on June 25, 1999); Italian Registration No. 1299011 (registered on June 1, 2010); and Brazilian Registration No. 829057196 (registered February 20, 2018).
Complainant also owns the registrations for numerous domain names. These include <enel.it>, registered in 1996, and <enel.com>. Complainant uses this and other domain names to communicate with consumers and other online users about its products and services offered under the ENEL mark.
The disputed domain name was registered on February 5, 2021. By the date of the filing of the Complaint, the disputed domain name resolved to a Pay-Per-Click website in Portuguese. Currently, the disputed domain name is not linked to an active website.
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainants’ trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the ENEL mark, which is recognized globally in the energy sector, with a ranking of 87 in Fortune Global 500.
Complainant contends that Respondent has incorporated Complainant’s well-known ENEL mark into the disputed domain name, and merely added the geographically descriptive term, “brasil,” which consumers will likely associate with Complainant and its energy services, which are offered in Brazil (also known as Brasil in Portuguese). Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions.
The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates Complainant’s ENEL mark and merely added the geographical term “brasil.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary words or geographical terms, does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name used to resolve to a Pay-Per-Click website in Portuguese with links connected to Complainant’s business field, this would be sufficient for a finding of bad faith registration and use. Currently, the disputed domain name is not linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. SeeWIPO Overview 3.0, Section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, and has registered using a privacy service. Given the level of exposure of Complainant’s marks globally, the Panel finds sufficient evidence that Respondent was likely aware of Complainant’s rights at the time of registering the disputed domain name. See, for example, Enel S.p.A. v. G.A.C. – Consulenza Informatica, WIPO Case No. D2021-0436 (transferring <enel.click>, et. al.).
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph (4)(a)(iii) of the Policy.
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 <enelbrasil.com> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: November 3, 2021