Complainant is Enel S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is CARMELA GRECO, Italy.
The disputed domain name <gruppoenel.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 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 31, 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 June 4, 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2021.
The Center appointed Andrea Mondini as the sole panelist in this matter on July 13, 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 is one of the largest Italian companies in the energy market serving more than 26 million Italian customers and has subsidiaries in 32 countries across four continents.
Complainant owns numerous trademarks with the element ENEL, inter alia, the Italian Trademark ENEL (figurative) (Registration No. 1299011, registered on June 1, 2010).
Complainant also holds several domain names, including the domain names <enel.it> and <enel.com>.
The disputed domain name was registered on December 16, 2020.
The disputed domain name does not resolve to an active website.
Complainant contends as follows:
The disputed domain name is confusingly similar to the ENEL trademark in which Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the descriptive word “gruppo” (which means “group” in Italian) is not sufficient to avoid confusing similarity.
Respondent has no rights or legitimate interests in respect of the disputed domain name. The mark ENEL is associated with Complainant, since it has been extensively used to identify Complainant for decades. Respondent has not been authorized by Complainant to use this trademark.
The disputed domain name was registered and is being used in bad faith because it is obvious that Respondent had knowledge of both Complainant and its well known trademark at the time it registered the disputed domain name, and because the lack of use of a domain name that coincides with a well-known trademark owned by someone else constitutes use in bad faith.
Respondent did not reply to Complainant’s contentions.
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the 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.
The Panel is satisfied that Complainant owns a trademark registration for its ENEL trademark.
The Panel notes that the disputed domain name incorporates in its entirety the ENEL trademark. The addition of the descriptive word “gruppo” (which means “group” in Italian) does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark ENEL.
The first element of paragraph 4(a) of the Policy has been met.
Complainant states it has not authorized Respondent to use the trademark ENEL and that before notice of the dispute, there is no evidence of Respondent’s use, or demonstrable preparation to use, the disputed domain name. The Panel does not see any contrary evidence from the record.
In the view of the Panel, Complainant has succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has been met.
Complainant has shown to the satisfaction of the Panel that its ENEL trademark is well-known in particular in Italy, where Complainant has over 26 million customers and where Respondent is located.
In the view of the Panel, it is inconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith.
The disputed domain name does not resolve to an active website. However, Respondent’s passive holding of the disputed domain name qualifies as use in bad faith in this case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this regard, the Panel notes the reputation of Complainant’s trademark, particularly in Italy where Respondent is located, and Respondent’s failure to submit a response or provide any evidence of actual or contemplated good-faith use. Furthermore, it is inconceivable that Respondent could make any good faith use of the disputed domain name.
The Panel thus finds that the disputed domain name was registered and is being used in bad faith.
The third element of paragraph 4(a) of the Policy has been met.
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 <gruppoenel.com> be transferred to the Complainant.
Date: July 20, 2021
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