The Complainant is Enel S.p.A, Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Jungyuhkook, Republic of Korea, self-represented.
The disputed domain name <enelco.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 13, 2021, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On December 15 and 17, 2021, the Complainant requested for English to be the language of the proceeding. On December 16, 2021, the Respondent requested for Korean to be the language of the proceeding.
The Center verified that 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 in English and Korean of the Complaint, and the proceedings commenced on December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. On January 16, 2022, the Respondent requested for an extension to submit a Response. Subsequently, the due date for Response was extended through January 20, 2022. The Response in English and Korean was filed with the Center on January 20, 2022.
The Center appointed Moonchul Chang as the sole panelist in this matter on February 11, 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.
The Complainant, Enel S.p.A is an Italian company in the energy market. The Complainant is the parent company of the Enel Group which globally operates through its subsidiaries. The Complainant now supplies energy all around the world with an extensive presence in Europe. The Complainant has offered its energy services and products in connection with its ENEL mark.
The Complainant owns ENEL trademarks in various countries worldwide including Italy and the European Union. It includes European Union Registration No. 756338 (registered on June 25, 1999) International Registration No.893523 designating China (registered on June 9, 2006). The Complainant also owns about more than 100 domain names incorporating the trademark ENEL, which include <enel.it> and <enel.com> registered in 1996.
According to the publicly available WhoIs information, the disputed domain name <enelco.com> was registered on June 6, 2008. By the date of the filing of the Complaint, the disputed domain name resolved to a parking page compromising pay-per-click (“PPC”) links which were displayed in Italian.
The Complainant contends that:
(a) The disputed domain name is identical or confusingly similar to its trademark. The disputed domain name incorporates the Complainant’s trademark ENEL in its entirety, which is the only distinctive component of the disputed domain name because the suffix “co” is often used as a common abbreviation for corporation or company. The addition of the term “co” in the disputed domain name would not prevent a finding of the confusing similarity.
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has neither authorized nor given its consent to, the Respondent to register or use the disputed domain name. There is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Further, the disputed domain name resolves to a parking page of PPC links which were displayed in Italian and related to the energy services. The disputed domain name has been registered and is being used exploiting the reputation of the Complainant’s trademarks ENEL to attract current and potential clients of the Complainant. In addition, the Respondent has never been commonly known by the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith. The disputed domain name reproduces, without any authorization, the Complainant’s trademark ENEL. Given the reputation of the Complainant’s trademark and trade name ENEL, the Respondent had knowledge of the Complainant’s trademark ENEL. The Respondent registered the disputed domain name to take advantage of, and exploit the reputation of the Complainant’s trademark ENEL. Further, the Respondent has used for the disputed domain name to resolve to a parking page including PPC links. It is the evidence of bad faith use of the disputed domain name by exploiting the reputation of the Complainant’s trademark ENEL. In addition, the Respondent has registered more than 75,000 domain names, most of which are in violation of third parties’ rights. (See, e.g., Institut de Recherche Biologique – IRB v. Jungyuhkook, WIPO Case No. D2018-2125; Midea Group Co., LTD v. Jungyuhkook and beats, WIPO Case No. D2021-0615; and Robert Bosch GmbH v. Jungyuhkook / beats, WIPO Case No. D2019-2162)
The Respondent contends that:
(1) Since the disputed domain name was registered in 2008, it has been using to resolve to an advertising parking page. The term “enel” has a different meaning from the term “enelco”ENELCO. The trademark ENELCO was registered by several other companies, and it is different from the Complainant’s mark. The disputed domain name does not refer to the Complainant’s ENEL mark.
(2) The disputed domain name is being used to operate a legitimate site of advertising software. This site promotes a software for billing of electricity and is not related to the Complainant’s products and services. The website includes neither the word “enel” nor any ENEL product on it.
(3) Most of the Complainant’s ENEL trademarks were registered after the Respondent registered the disputed domain name in 2008. The Complainant registered the trademark ENELCO in Greece in 2011. Thus, there is no evidence that the Respondent used the mark ENELCO in bad faith during the period of the preceding 3 years, targeting the Complainant’s trademark ENEL. The Complainant internationally registered the trademark ENEL in February 4, 2016 and has operated the domain name <enel.it> since 2017. Therefore, it is an erroneous assumption that the Respondent knew the reputation of the Complainant’s trademark ENEL and maliciously registered and used the disputed domain name in bad faith.
(4) Since the Complainant registered the trademark ENELCO in 2011 after the Respondent registered the disputed domain name in 2008, the Complaint was brought in bad faith using the UDRP to deprive the Respondent of the disputed domain name.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the Panel determines otherwise or otherwise agreed to by the Parties. In this present case, the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean. However, the Complaint was filed in English.
The Complainant requests that the language of proceeding be English for the following reasons: the Respondent may have at least sufficient knowledge of English since the disputed domain name includes Latin characters and English words. The disputed domain name also contains English term “co”. On the other hand, the Respondent requests to conduct the administrative proceeding in Korean.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. In addition, the Response was written in both Korean and English. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the Parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors. In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it would accept the Complaint in English and the Response in both English and Korean – which it has done, and that it would render this Decision in English.
Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has 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.
The disputed domain name includes the Complainant’s trademark ENEL in its entirety together with addition of a term “co”. The Panel’s assessment of identity or confusing similarity involves a straightforward comparison between the disputed domain name and the textual components of the relevant mark. Adding such term does not prevent a finding of confusing similarity and does not change the overall impression of the disputed domain name as being confusingly similar to the Complainant’s trademark. (Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Numerous UDRP panels have held that where a domain name incorporates a complainant’s trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, it is sufficient to consider the domain name “confusingly similar” to that mark within the meaning of the Policy (Section 1.7 of WIPO Overview 3.0). In addition, the generic Top-Level Domain (“gTLD”) “.com” can be disregarded under the confusing similarity test. (Section 1.11.1, WIPO Overview 3.0)
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0)
The Complainant contends that it has never authorized or licensed the Respondent to use the Complainant’s trademark ENEL or to register any domain names incorporating it and that the Respondent has used the Complainant’s trademark without permission of the Complainant.
On the other hand, the Respondent rebuts that the disputed domain name does not refer to the Complainant’s mark ENEL because the term “enelco” has a different meaning from the term “enel”. The Respondent also asserts that the disputed domain name is being used for a legitimate site of advertising software for billing of electricity services. However, the Respondent did not clarify why he chose the disputed domain name and in what respects he is related to the name of “ENELCO”. The Respondent argues that the trademark ENELCO was registered by several other companies, but it is not clear to the Panel why this would lead to the conclusion that the Respondent would have rights or legitimate interests in the disputed domain name.
Here, the Panel notes that at time of filing the Complaint the disputed domain name resolved to a PPC website which was displayed in Italian and related to electric energy or electricity. This supports that the disputed domain name targeted the Complainant’s trademark. Under the UDRP panels have usually found that the use of a domain name to host a parking page compromising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and good will of the complainant’s mark or otherwise mislead Internet users (section 2.9 of WIPO Overview 3.0).
In the consideration of the above circumstances the Panel finds that the Complainant has made out a prima facie case and the Respondent failed to come forward with any appropriate evidence that might rebut the Complainant’s prima facie case.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, the Complainant obtained the registration of the European Union trademark ENEL in 1999 much earlier than the Respondent registered the disputed domain name in 2008. Having considered that the Complainant has conducted business covering a truly global energy market under the trade name and mark ENEL, it is highly likely that the Respondent has been aware of the Complainant’s reputation of the ENEL mark when registering a confusingly similar domain name that full incorporates the Complainant’s mark plus the term “co” (likely meant to stand for “company”) and moreover having hosted PPC links in the same industry. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (Section 3.1 of the WIPO Overview 3.0). Thus, it is considered that the Respondent deliberately chose the disputed domain name to create a likelihood of confusion with the Complainant’s trademark as to the association or affiliation of the Complainant.
Secondly, as above discussed, at time of filing the Complaint the disputed domain name resolved to a parking page including PPC links, which were displayed in Italian and related to the electric energy or electricity. Having considered that the Complainant’s ENEL mark is distinctive or well known in the field of energy, the Panel holds that the Respondent registered and has been using the disputed domain name in bad faith.
Finally, having examined the Respondent’s previous registration of numerous domain names incorporating third parties’ trademarks, the Panel considers that these registrations constitute a pattern of cybersquatting. (See, e.g., Institut de Recherche Biologique – IRB v. Jungyuhkook, WIPO Case No. D2018-2125; Midea Group Co., LTD v. Jungyuhkook and beats, WIPO Case No. D2021-0615; and Robert Bosch GmbH v. Jungyuhkook / beats, WIPO Case No. D2019-2162).
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
The Respondent asserts that the Complaint was brought in bad faith using the UDRP to deprive the Respondent of the disputed domain name. However, since the Panel has found that the disputed domain name has been registered and is being used in bad faith, the Panel concludes that the Complainant has not filed its Complaint in bad faith as an attempt at RDNH.
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 <enelco.com> be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Date: February 25, 2022