WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Contact Privacy Inc. Customer 0162013950 / Milen Radumilo

Case No. D2021-2320

1. The Parties

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

Respondent is Contact Privacy Inc. Customer 0162013950, Canada / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <enelernrgia.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On that same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also, on July 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 16, 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

Complainant Enel S.p.A manages the majority of the Italian electricity and gas distribution network serving more than 26 million Italian customers. Enel began its international business in 2001 when it started its activities in Spain, Canada, the United States of America and Brazil. Today Enel supplies energy worldwide (including through subsidiaries) for example, in Europe, the Iberian Peninsula, Slovakia, Romania, Russian Federation, Greece and Bulgaria, South America, Morocco and South Africa. Complainant is comprised of nearly 70,000 people from around the world.

Complainant is also known because it is engaged in international events, such as Expo Milan 2015, the largest international exhibition, of which Enel is the Official Global Partner with its own “Enel Pavilion,” and as 56th Venice Biennial international art exhibition with a focus on contemporary art. Also, Complainant has been working alongside the ABB FIA Formula E World Championship, a single-seater motorsport championship that uses only electric cars, as the Official Power Partner since 2014. Formula E provides live television coverage by way of major broadcasters around the world.

Complainant owns numerous trademark registrations around the world for the marks ENEL and ENEL ENERGIA, for example, Italian and European Union Registration Nos. 1299011 and 18204765 (the “ENEL Mark”, the “ENEL ENERGIA” Mark, collectively the “Marks”). Complainant owns more than 100 domain names containing ENEL and has an Internet presence dating back to 1996.

The Domain Name was registered on June 30, 2021. It resolves to a webpage that has a bright red background with white text. The text states in pertinent part: “Deceptive site ahead. Attackers on enelernrgia.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards.) . . . Google Safe Browsing recently detected phishing on enelernrgia.com. Phishing sites pretend to be other websites to trick you.”

5. Parties’ Contentions

A. Complainant

Complainant submits that this is a typical example of typo squatting. The Domain Name is so similar to the ENEL ENERGIA Mark except for a missing letter “e” substituted – in a slightly different position – by the letter “r”. Notwithstanding the typo-squatting, the Domain Name is confusingly similar to the Marks because the Domain Name incorporates the ENEL Mark and the ENEL ENERGIA Mark. Internet users and consumers will inevitably focus their attention on the terms “enel” and “enel energia”, and associate the Domain Name with Complainant’s well-known Marks.

Respondent is not known and cannot be known by the Domain Name which clearly refers to the ENEL Mark, in and to which only Complainant has rights. Complainant has neither authorized, nor somehow given its consent to register and use the Domain Name to Respondent. There are no trademark applications or registrations for ENELERNRGIA.COM trademarks in Respondent’s name. The Domain Name has been registered and it is being used to exploit the reputation of Complainant’s Marks to attract Complainant’s current and potential clients. Moreover, the Domain Name resolves to a webpage detected as dangerous due to malware or phishing. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, as the Domain Name points to a misleading and dangerous website where there is a risk of phishing activities. There is no evidence of any use of the passive domains as a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.

Respondent’s bad faith exists because: (1) there is no connection between Respondent and the relevant distinctive sign reproducing the company name “Enel” and Complainant’s ENEL trademarks; (2) the Domain Name is not used in good faith for the offering of goods and services to the public, nor for a legitimate commercial or noncommercial use without the intention of misleading Complainant’s customers or infringing the Marks. Also, the Domain Name is not connected to an active site; (3) “ENEL” is not a common or descriptive term, but it is obviously a trademark in and to which Complainant has rights; (4) Complainant’s Marks are well-known; (5) the Domain Name reproduces, without any authorization or approval, the Marks, which is the only distinctive component of the Domain Name; (6) Respondent had knowledge or at any rate exercised a willful blindness of Complainant’s earlier rights in and to the Marks; (7) Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Marks to attract Internet users to the website associated to the Domain Name creating a likelihood of confusion with the Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites depriving.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has provided uncontroverted evidence of its rights in the ENEL and ENEL ENERGIA Marks by means of the aforementioned trademark registrations.

Insofar as the Domain Name wholly incorporates the ENEL and ENEL ENERGIA Marks, the Panel finds that it should be regarded as at least confusingly similar to Complainant’s Marks. Merely adding a minor misspelling or typographical error of a mark – here, adding a letter “r”, omitting one of the letter “n”s, and omitting one of the letter “e”s – does not create a new or different mark. See Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0317. Such an insignificant modification to a trademark is commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (“addvil.com” held confusingly similar to ADVIL).

Moreover, it is common practice under the Policy to disregard generic Top-Level Domains such as the “.com”, “.net” and “.org” portion of domain names for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontroverted that: Respondent is not known by the Domain Name which reflects Complainant’s ENEL and ENEL ENERGIA Marks; Complainant has not authorized or otherwise consented to Respondent’s use of the Marks including in registering the Domain Name; and there are no trademark applications or registrations for ENELERNRGIA.COM trademarks in Respondent’s name. Complainant further maintains that Respondent registered the Domain Name and has been using it to exploit the reputation of Complainant’s Marks to attract Complainant’s current and potential clients. Insofar as the Domain Name resolves to a webpage detected as dangerous due to malware or phishing, Complainant maintains that Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because of those activities. Furthermore, Complainant argues that there is no evidence that the passive use of the Domain Name is a bona fide offering of goods or services, nor is there any evidence of demonstrable preparations for such an offering.

Where, as here, Complainant has raised a prima facie presumption of Respondent’s lack of any rights or legitimate interests in the Marks, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered and has been using a Domain Name that is confusingly similar to the well-known ENEL and ENEL ENERGIA Marks. Respondent registered the Domain Name only recently in June 2021, whereas Complainant has been using the Marks for many years before that time. Given Complainant’s widespread and long-standing use of the Marks worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Marks when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that: (1) Respondent has not shown any rights or legitimate interests in the Domain Name; and (2) Respondent registered a Domain Name that is exactly the same as Complainant’s registered ENEL Mark and a typo-squatted version of its ENEL ENERGIA Mark which does not distinguish the Domain Name from the Mark. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.

There is no plausible reason for Respondent’s selection of a confusingly similar Domain Name in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”). The evidence in the record provided by Complainant shows that Respondent has been using the Marks to entice the public to install malware or personal information from which Respondent can benefit monetarily (warnings to the public include: “Attackers on enelernrgia.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards) . . . Google Safe Browsing recently detected phishing on enelernrgia.com. Phishing sites pretend to be other websites to trick you.”). Given these circumstances and the fact that Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use, the Panel is left to conclude that Respondent’s use of the Marks is in bad faith.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 Domain Name <enelernrgia.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: September 30, 2021