WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Selvia Tarazano

Case No. D2021-4245

1. The Parties

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

The Respondent is Selvia Tarazano, Italy.

2. The Domain Name and Registrar

The disputed domain name <enel-enrgia.com> is registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 December 17, 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 December 22 2022.

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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2022.

The Center appointed Anna Carabelli as the sole panelist in this matter on February 7, 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 one of the largest Italian energy companies and one of the main global operators in the energy market. It manages the majority 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 four continents and brings energy to around 64 million customers.

The Complainant owns several trademark registrations for ENEL and ENEL ENERGIA throughout the world (Annexes 14 and 15 to the Complaint), including the following:

- Italian trademark registration No. 000825764 for the ENEL figurative trademark, registered on October 4, 2000;
- Italian trademark registration No. 0001299011 for the ENEL figurative trademark, registered on June 1, 2010;
- Italian trademark registration No. 0000825734 for the ENEL trademark, registered on October 4, 2000;
- European Union trademark registration No. 000756338 for the ENEL device trademark, registered on June 25, 1999;
- European Union trademark registration No. 015052152 for the ENEL trademark, registered on May 13, 2016;
- International trademark registration No. 1322301 for the ENEL trademark, registered on February 4, 2016 - designated countries: China, Colombia, Algeria, Israel, Morocco, Mexico, Russian Federation, Turkey, United States of America;
- Italian trademark registration No. 00001048720 for the ENEL ENERGIA trademark, registered on October 4, 2000;
- European Union trademark registration No. 003060861 for the ENEL ENERGIA figurative trademark, registered on May 23, 2007
- European Union trademark registration No. 018204765 for the ENEL ENERGIA trademark, registered on June 13, 2020.

The Complainant is the owner of numerous domain names containing the trademarks ENEL (Annex 16 to the Complaint), including <enel.it>, <enel.com>, <enelenergia.pl>, and <enelenergie.fr> associated with various country Top-Level Domains (“TLD”).

The Complainant is or has been an official partner and/or sponsor of some internationally known sporting events.

The disputed domain name was registered on April 7, 2021. The disputed domain name resolves to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant asserts and contends that:

(a) the disputed domain name is confusingly similar with the trademarks ENEL and ENEL ENERGIA in which the Complainant has rights, since: (i) it incorporates the whole Complainant’s company name and trademark ENEL and (ii) it is conceptually identical to, and confusingly similar from the visual/phonetic points of view with the Complainant’s trademark ENEL ENERGIA and (iii) the misspelling “enrgia” instead of the Italian word “energia” is not sufficient to avoid confusing similarity.

(b) The Respondent has no rights or legitimate interests in the disputed domain names since: (i) the Complainant has not authorized or somehow given consent to the Respondent to register and use the disputed domain name, (ii) the disputed domain name resolve to a parking page, (iii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, 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.

(c) The disputed domain name was registered in bad faith since the Complainant’s trademarks are distinctive and well known. The fact that the disputed domain name comprises the Complainant’s distinctive trademark ENEL indicates that the Respondent had knowledge or at any rate exercised a willful blindness of the Complainant’s earlier rights in and to the trademark and trade name ENEL, when registering the disputed domain name.

The disputed domain name is also used in bad faith. In this connection, the Complainant highlights that the disputed domain name merely points to a parking page and does not lead to any active website. As held by previous UDRP panels, the lack of use of a domain name that coincides with a well-known trademark owned by someone else constitutes use in bad faith. The Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s trademarks to attract Internet users, thus creating a likelihood of confusion with the Complainant’s trademarks and depriving the Complainant of the possibility to register the disputed domain name in which it might have a legitimate interest.

Finally, the Complainant highlights that the Respondent registered three other domain names incorporating the Complainant's trademarks ENEL and ENEL ENERGIA, which were the subject of a previous UDRP case decided in favor of the Complainant (Enel S.P.A. v. Selvia Tarazano, Giovanni Cangani, WIPO Case No. D2021-2808).

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the disputed domain name is identical or confusingly similar to a 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 name; and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademarks ENEL and ENEL ENERGIA based on the trademark registrations cited under section 4 above and the evidence submitted as Annexes 14 and 15 to the Complaint.

The disputed domain name entirely incorporates the Complainant’s trademark ENEL and this is a sufficient element to establish confusing similarity, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409).

The disputed domain name also conceptually incorporates the Complainant’s trademark ENEL ENERGIA and the misspelling “enrgia” does not prevent a finding of confusing similarity under the Policy, paragraph 4(a)(i). See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”),

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

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

The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademarks. The Complainant asserts that the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain as the disputed domain name is not resolving to an active website. Instead, it merely points to a parking page.

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).

By not submitting a Response, the Respondent 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. The Panel notes that the composition of the disputed domain name, namely the addition of the misspelled term “enrgia” that is descriptive of the Complainant’s services under the ENEL trademark, is such to carry a risk of implied affiliation to the Complainant, which cannot constitute fair use. 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

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith.

The disputed domain name incorporates the Complainant’s trademark ENEL and the trademark ENEL ENERGIA with a minor misspelling, and was registered long after these trademarks became well known. Given the distinctiveness and well-established reputation of the Complainant’s trademarks (recognized in Enel S.p.A. v. G.A.C. - Consulenza Informatica, WIPO Case No. D2021-0436, and in Enel S.p.A. v. Lucky Graziano, enel.website, WIPO Case No. D2021-1014) it is not conceivable that the Respondent did not have in mind the Complainant’s trademarks when registering 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. This finding is reinforced given the typosquatting nature of the disputed domain name when compared to the Complainant’s ENEL ENERGIA trademark, which prior panels have held that typosquatting is indicative of bad faith. The fact that the Respondent registered three other domain names incorporating the Complainant's trademarks ENEL and ENEL ENERGIA, which were the subject of a previous UDRP case decided in favor of the Complainant (Enel S.p.A. vs Selvia Tarazano, Giovanni Cangani supra), confirms that the Respondent targeted the Complainant when it registered the disputed domain name.

The Complainant contends that the disputed domain name merely points to a parking page to which Internet users are directed when entering the disputed domain in the browser bar. It does not appear that the Respondent has ever developed a website associated with the disputed domain name.

At their most basic, parked domains are registered domains that are not being used. Instead, they are “parked” for future use. The consensus view amongst WIPO panelists is that the apparent lack of so-called active use of the domain name (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include (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. See section 3.3 of WIPO Overview 3.0.

Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

In the circumstances of this case and in light of the considerations set out in paragraphs A) and B), the Panel finds that the passive holding of the disputed domain name qualifies as bad faith use. The Panel has taken into consideration the following factors: the Complainant’s marks are well-known marks; the Respondent has not responded in the proceeding; and, the Respondent has previously engaged in a pattern of registering domain names corresponding to the Complainant's trademarks. The Panel agrees that there is no plausible explanation why the Respondent selected the disputed domain name other than for the purpose of “intentionally [attempting] to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy).

For all the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent.

Therefore, the Complainant has established 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-enrgia.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: February 18, 2022