WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Super Privacy Service LTD c/o Dynadot LLC / Milen Radumilo

Case No. D2021-1615

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot LLC, United States of America / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <enel.pro> is registered with Dynadot LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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 May 27, 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 May 27, 2021.

On May 27, 2021, the Center sent an email communication to the parties inviting the parties to take a certain action to ensure the renewal of the disputed domain name before its expiry on July 18, 2021. The Registrar confirmed that the disputed domain name had been renewed by the Complainant on June 7, 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 June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on July 2, 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

The Complainant is a company active in the energy market and 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, bringing energy to around 64 million customers.

The Complainant owns trademark registrations in various jurisdictions, including the Italian trademark ENEL (Reg. No. 0001299011, registered on June 1, 2010), the European Union trademark ENEL (Reg. No. 015052152, registered on May 13, 2016) and the International trademark ENEL (Reg. No. 1322301, registered on February 4, 2016).

The Complainant further holds the domain name <enel.com> under which the official website of the Complainant is available. The Complainant advertises and sells its services through its <enel.com> domain name. The Complainant holds various other domain names incorporating its ENEL trademark.

The disputed domain name was registered on July 18, 2020, and resolves to rapidly changing websites, some of which contain pay-per-click content.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

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

6. Discussion and Findings

Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the ENEL trademark.

The ENEL trademark is wholly reproduced in the disputed domain name.

It has become a consensus view among UDRP panels that the applicable Top-Level Domain (“TLD”) in a domain name is a standard registration requirement and as such may be disregarded when assessing confusing similarity under the first element of the Policy. This practice also applies with regard to new TLDs such as “.pro” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, sections 1.11.1 and 1.11.2).

Therefore, the Panel concludes that the disputed domain name is identical to the Complainant’s ENEL trademark.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.

The Complainant has credibly alleged that the Respondent uses the disputed domain name for generating revenue by using pay-per-click services while taking advantage of the Complainant’s trademark notoriety. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.

Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.

The Panel finds that the reproduction of the Complainant’s trademark along with the TLD “.pro” creates a likelihood of confusion between the Complainant’s ENEL trademark and the disputed domain name.

The evidence and allegations submitted by the Complainant support a finding that the Respondent is engaged in an attempt to pass himself off as the Complainant by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website and to attract Internet users to his website for his own commercial gain. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466). The fact that the websites the disputed domain name resolves to are not always connected to the Complainant’s energy business does not prevent a finding of bad faith.

Accordingly, the Complainant has also fulfilled 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.pro>, be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: July 14, 2021