WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Jhon Donavan

Case No. D2021-3437

1. The Parties

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

Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Jhon Donavan, Poland.

2. The Domain Name and Registrar

The disputed domain name is <enelamericas.info> which is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 those in the Complaint. The Center sent an email communication to Complainant on October 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 19, 2021.1

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 Respondent of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2021.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on November 19, 2021. This Panel finds that it was properly constituted. This 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, based in Italy and parent of the Enel group of companies, is engaged in the energy sector and operates through its subsidiaries in more than 32 countries across the world.

Complainant has rights, among others, over: (i) the ENEL figurative mark for which it holds Registration No. 0001299011 with the General Bureau of Industrial Property Protection of Italy, registered on June 1, 2010, in classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42; (ii) the ENEL and design mark for which it holds International Registration No. 1322301, registered on February 4, 2016, and Registration No. 15052152 with the European Union Intellectual Property Office (EUIPO), registered on May 13, 2016, both in classes 4, 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41 and 42, (iii) the ENEL AMÉRICAS mark for which it holds Registration No. 1254438 with the National Institute of Industrial Property of Chile, registered on July 26, 2017, in classes 9, 11, 37, 38, 39 and 40; and (iv) the ENEL X and design mark for which it holds International Registration No. 1432290, registered on March 28, 2018, and Registration No. 017548322 with the EUIPO, registered on March 27, 2018, both in classes 7, 9, 11, 12, 35, 36, 37, 38, 39, 40, 41 and 42.

The disputed domain name was registered on May 5, 2021. At the time the Complaint was filed, the website associated with the disputed domain name showed, among others, “Learn how to earn a second salary by investing”, “enel”,2 “INVEST IN THE BEST”, “Invest in Enel Americas”, “Your name”, “Your last name”, “your email”, “Today Enel Américas SA is one of the largest private electricity companies in Latin America [...] during 2018 a new business line was launched, Enel X, a global business that leads the transformation of the energy sector. Enel operates in 32 countries in 5 continents”.3

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows.

Complainant is the largest Italian company in the energy market and, through its subsidiaries forming the Enel Group, operates in more than 32 countries with a net installed capacity of around 86 GW and brings energy to around 64 million customers. Its business is highly diversified, running on hydroelectric, wind, geothermal, solar, thermoelectric, nuclear and other renewable sources of power. Complainant’s stock is listed on the Milan stock exchange since 1999, and thirteen other companies of the Enel Group are listed on the stock exchanges of Italy, Spain, Russia, Argentina, Brazil, Chile and Peru.

Complainant and its trademarks are worldwide well-known. For several years Complainant has been featured in the Fortune Global 500 List and the Fortune Changed the World List and, in 2017, Complainant was ranked 19th in the World’s Best Employers list of Forbes. Further, Complainant has participated in international important events, such as the Expo Milan 2015 (Official Global Partner with its own “Enel Pavilion”), the 56th Venice Biennial (an international art exhibition), the Tour of Italy (Official Sponsor of the Maglia Rosa since 2016), the ABB FIA Formula E World Championship (Official Power Partner since the inaugural season in 2014) and, with its ENEL X mark, was also the Official Smart Charging Partner of the 2019 MotoE World Cup (the first international championship for electric motorcycles).

Complainant has prior rights in and to the ENEL and ENEL AMÉRICAS marks, which are used in Italy and in many countries of the world for a huge variety of goods and services, and for which Complainant owns numerous mark registrations in several jurisdictions. Complainant is also the owner of more than 100 domain names containing the ENEL mark, including <enel.it> and <enel.com>.

The disputed domain name is confusingly similar to Complainant’s ENEL and ENEL AMÉRICAS marks. The disputed domain name incorporates Complainant’s whole name and marks. When confronted with the disputed domain name, Internet users will inevitably focus their attention on the terms “enel” and “enel americas” and associate them with said Complainant’s well-known identical marks.

Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or given its consent to Respondent to register and use the disputed domain name. Respondent is not known by the disputed domain name and there are no mark applications or registrations for “enel americas” in the name of Respondent.

The disputed domain name is not used in good faith for the offer of goods and services to the public, nor is it used for legitimate commercial or noncommercial use without the intention of misleading Complainant’s customers or infringing the ENEL marks. The disputed domain name leads to a potentially dangerous phishing web page that exploits the reputation of the ENEL mark to deceive visitors and convince them to provide personal information. Such potential phishing website pretends to be a Complainant’s webpage in order to deceive visitors and induce them to reveal sensitive information such as phone number, account details and credit card details. Such website, which shows the ENEL mark in one of the figurative versions registered by Complainant, is used to promote fake investments in Complainant itself.

The registration of the disputed domain name was carried out in bad faith. At the time of registering the disputed domain name, Respondent had knowledge, or at any rate exercised a willful blindness, of Complainant’s earlier rights in and to the ENEL mark. ENEL is not a common or descriptive term and, because of its intensive use by Complainant, it is well-known. The disputed domain name reproduces, without any authorization or approval, the ENEL mark, which is the most distinctive component of the disputed domain name.

The disputed domain name has been registered and is being used for exploiting the reputation of Complainant’s ENEL and ENEL AMÉRICAS marks. The disputed domain name is used for a potentially dangerous phishing page through which malicious users try to deceive visitors by convincing them to provide personal information, financial data or access codes, pretending to be a trustworthy entity. By registering and using the disputed domain name, Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the ENEL marks, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of such website, and has attempted to deprive Complainant of the possibility to register the disputed domain name.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. As described in section 3. above, at the Center’s request the Registrar sent its registrar verification on October 18, 2021, disclosing Jhon Donavan as the registrant of the disputed domain name, and afterwards Complainant filed an amendment to the Complaint adding Jhon Donavan as Respondent. Since the real underlying registrant has been promptly disclosed, this Panel decides to have Jhon Donavan as the proper Respondent and thus further references to Respondent herein shall be understood to Jhon Donavan.4

The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview 3.0). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights over the ENEL AMÉRICAS mark, among others incorporating the “enel” nominative element.

Since the addition of a generic Top-Level Domain (i.e., “.info”) in a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark (see section 1.11 of the WIPO Overview 3.0). Taking into account the aforesaid, it is clear that the disputed domain name incorporates in its entirety Complainant’s ENEL AMÉRICAS mark (removing the accent in the “e” of “américas”) without any additional element.

Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that it has not authorized Respondent to use its marks, that Respondent is not commonly known by the disputed domain name, that Respondent does not hold any mark registrations or applications for “enel americas”, and that Respondent is not using the disputed domain name in connection with any legitimate commercial or noncommercial use.

The evidence in the file indicates that the website linked to the disputed domain name does not show the identity of the operator nor any disclaimer as regards Complainant, but rather displays an invitation to invest in Enel Américas, the ENEL and design mark, and information pertaining to Complainant along with a reference to the ENEL X mark, which might lead visitors to believe that such website is somehow associated with Complainant. All that demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Since the disputed domain name is almost the same as the ENEL AMÉRICAS mark, which incorporates Complainant’s name, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0). In the case file, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to possible rights to or legitimate interests in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent did not rebut.

Taking into consideration that Complainant’s registration and use of its marks preceded the creation of the disputed domain name, Complainant’s international presence, the widespread use of such Complainant’s marks, and the content of the website associated with the disputed domain name, this Panel is of the view that Respondent should have been aware of the existence of Complainant and its marks at the time it obtained the registration of the disputed domain name.

As set forth above, the website linked to the disputed domain name conveys the impression that it is somewhat associated with Complainant. There appears to be no disclaimer disassociating such website from Complainant, and Respondent has used a privacy service to hide its name and contact details, which may be indicative of bad faith.5 Further, there are additional factors in this case that are indicative of Respondent’s bad faith, such as: (i) Respondent is using Complainant’s ENEL AMÉRICAS mark in the disputed domain name without Complainant’s authorization; (ii) the risk of implied affiliation of the disputed domain name with Complainant and its mark; and (iii) Respondent’s failure to appear at this proceeding. It seems to this Panel that in using the disputed domain name, Respondent has sought to create a likelihood of confusion with Complainant and its marks as to the sponsorship, source, affiliation, or endorsement of the disputed domain name and its website, when in fact there is no such connection.

Further, although there is no evidence of a fraudulent scheme, the fact that the disputed domain name and its website are used to ask for contact information of Internet visitors who may wish to invest in Complainant, coupled with the fact that they reproduce some marks and information pertaining to Complainant without revealing the identity of the website operator, makes this Panel to consider that Respondent’s use of the disputed domain name poses a potential risk for phishing activities, that is, the deceitful obtention of sensitive information or of a payment, by using a domain name confusingly similar to another’s mark.6

In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name <enelamericas.info> be transferred to Complainant.

Gerardo Saavedra
Sole Panelist
Date: December 3, 2021

1 The WhoIs report attached to the Complaint showed “Withheld for Privacy Purposes/Privacy service provided by Withheld for Privacy ehf” as registrant. The amendment to the Complaint added Jhon Donavan as Respondent, as per the information disclosed by the Registrar.

2 The word “enel” appears in substantially the same style and colours of the ENEL and design mark cited above.

3 Although not mentioned in the Complaint, this Panel notices that Enel Américas SA is cited as a Complainant’s subsidiary in its Interim Financial Report at September 30, 2020 (Annex 5 of the Complaint). In this respect, this Panel reiterates it is not the panel’s role to elaborate arguments on behalf of any of the parties.

4 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. See also section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

5 See Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc., / GREYHAT SERVICES, WIPO Case No. D2016-0385: “the use of a privacy protection service is also an indication of bad faith attempt to conceal the Respondent’s true identity.”

6 See Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488: “the Panel accepts Complainant’s undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that there is strong suspicion of Respondent using the Domain Name in an elaborate common phishing scam.” See also section 3.4 of the WIPO Overview 3.0.