Enel S.p.A. v ming wang

WIPO Case No. D2022-2539

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Enel S.p.A. v. ming wang

Case No. D2022-2539

1. The Parties

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

The Respondent is ming wang, China.

2. The Domain Name and Registrar

The disputed domain name <enelpk.com> is registered with Web Commerce Communications Limited dba

WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2022.

On July 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2022, 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 July 15, 2022, 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 July 18, 2022.

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 the due date for Response was August 8, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 9, 2022.

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The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 15, 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

Enel S.p.A. (hereinafter referred to as “Enel” or the “Complainant”) is one of the largest Italian companies in

the energy market. It manages the greater part 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.

Today the Complainant supplies energy worldwide, with an extensive presence in Europe. The Complainant
is also one of the largest energy companies in the Americas, with 71 power generation plants of all types
with a managed capacity of around 6.03 GW across 18 states in the United States of America and Canada,
and in South America up to the central Andes.

The Complainant is the owner of more than 100 domain names containing the trademark ENEL, including <enel.it> and <enel.com>, both of which have been registered in the name of the Complainant since 1996.

The Complainant owns the ENEL mark, which enjoys protection through many registrations thereof worldwide. The Complainant is, inter alia, the owner of the European Union Trade Mark number 000756338 for the ENEL device trademark, registered on June 25, 1999. The Complainant also owns the European Union Trade Mark registration number 1038136 for the ENEL GREEN POWER device trademark, registered on March 19, 2010.

The disputed domain name was registered on May 28, 2022.

The disputed domain name does not lead to an active website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark. According to the complaint, the acronym “pk” may stand for “Pakistan”. The Complainant is active in Pakistan to provide

services through ENEL and ENEL GREEN POWER trademarks.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain

name <enelpk.com>, which fully reproduces the Complainant’s well-known trademark ENEL and also
corresponds to the Complainant’s trade name associated with the “pk” acronym.

The Complainant has neither authorized, nor given its consent to register and use the disputed domain name to the Respondent. The disputed domain name has been registered and it is being used for exploiting the

reputation of the Complainant’s trademarks.

The disputed domain name does not direct to any active page.

The registration of the disputed domain name was carried out in clear bad faith and this can be found in the following circumstances:

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- there is no connection between the Respondent and the company name Enel and the trademark ENEL;

- it is also evidence of the Respondent’s bad faith that the disputed domain name is not used in good faith for

the offering of goods and services to the public, nor is it used for legitimate noncommercial use without the

intention of misleading the Complainant’s customers or infringing the registered ENEL trademarks;

- Enel is not a common or descriptive term, but it is obviously the trademark in and to which the Complainant

has demonstrated to have rights;

- because of the intensive use made by the Complainant, the Complainant’s trademark ENEL is well known;

- the disputed domain name reproduces, without any authorization or approval, the Complainant’s registered

trademark ENEL, which is the most distinctive component of the disputed domain name.

The Complainant also notes that the Respondent (ming wang) was the respondent for several UDRP procedures, such as Altive Limited v. Privacy Service Provided by Withheld for Privacy ehf / ming wang,

WIPO Case No. D2022-1139; Cube Limited v. tao wang / Yucong Yang, DA / ting zu / qianmei shen (沈前 梅) / wei li / zhiqiang lin / guangchang huang / xiansheng chen / ming wang / ChenJia Chen / GuZhuo Jing /

ZhuXiaoHong / ZhaoTao, Heng Shui Zhi De Jiu Ye Shang Mao You Xian Gong Si / ZhaoTao, Tai Yuan Shi

Hui Ming Yuan Guang Gao You Xian Gong Si, WIPO Case No. D2020-0703, all of which the panels

ordered the transfer or the cancellation of the respondent’s domain names.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements in which a complainant must satisfy in order to succeed.

The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and

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

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical or

confusingly similar to the Complainant’s trademark.

The Complainant holds several valid ENEL trademark registrations, which precede the registration of the disputed domain name.

The disputed domain name is confusingly similar to the Complainant’s trademarks since it merely reproduces the ENEL trademark in its entirety with the addition of two letters “pk”. As numerous UDRP panels have

held, where at least a dominant feature of the relevant trademark is recognizable in the domain name, it is

sufficient to establish that the domain name is identical or confusingly similar to that trademark.

The Panel finds the first element of the Policy has therefore been met.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the
Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or its

trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s

registration of the disputed domain name. The Respondent is not using the disputed domain name in
connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The
disputed domain name actually does not resolve to an active website. The Complainant has therefore
established a prima facie case that the Respondent has no rights and legitimate interests in the disputed
domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this

presumption.

The Respondent has failed to rebut the Complainant’s prima facie case.

Moreover, the nature of the disputed domain name, which is composed of the Complainant’s ENEL trademark and additional letters “pk” which could be the country code for “Pakistan”, carries a risk of implied

affiliation.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel, based on the evidence presented, accepts and agrees with the Complainant’s contentions that

the disputed domain name was registered and has been used in bad faith.

“Enel” is not a common or descriptive term, but a renowned trademark. The disputed domain name

reproduces, without any authorization or approval, the Complainant’s registered ENEL trademarks, and this

is the only distinctive component of the disputed domain name. The disputed domain name was registered

many years after the Complainant’s renowned trademarks were registered and used. In addition, the

Complainant has registered more than 100 domain names in generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) worldwide which incorporate the trademark ENEL, hence it is unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when

registering the disputed domain name. Therefore, it is more likely than not that the Respondent, when

registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the ENEL

trademark and trade name.

Furthermore, the Panel finds that the passive holding of the disputed domain name in the circumstances of the case does not prevent a finding of bad faith registration and use. On the contrary, this Panel agrees with previous UDRP panels that in the case of domain names containing well-known earlier marks, passive

holding can constitute an indication of bad faith. Here the Panel finds that the Respondent’s passive holding

of the disputed domain name constitutes bad faith registration and use.

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The bad faith registration and use of the disputed domain name are also affirmed by the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding.

The Penal also takes into account that the same Respondent (ming wang) was the respondent for several

UDRP procedures, as described in the section 5.A above, all of which the panels ordered the transfer or

the cancellation of the respondent’s domain names.

Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using
the disputed domain name in bad faith. Therefore, the 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, the Panel orders that the disputed domain name <enelpk.com> be transferred to the Complainant.

/Pablo A. Palazzi/

Pablo A. Palazzi

Sole Panelist
Date: September 1, 2022