Domini: Enel.tv assegnato ad Enel per vendere link pay per click

    WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ENEL S.p.A. v. Tizio Tizio
Case No. DTV2012-0005
1. The Parties

The Complainant is ENEL S.p.A. of Rome, Italy, represented by Jacobacci & Associati, Italy.

The Respondent is Tizio Tizio of HeBei, China.
2. The Domain Name and Registrar

The disputed domain name -enel.tv- is registered with Name.com LLC.
3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 17, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On the same date, Name.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2012.

The Center appointed Angela Fox as the sole panelist in this matter on March 22, 2012. 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

According to the Complaint, the Complainant is Italy’s largest power company and its corporate group is one of the largest utility service providers in Europe. It trades in the power and gas sectors in some 40 countries across 4 continents and has more than 61 million customers. Its business extends to the area of photovoltaic technologies and it is now testing solar thermal generation, which the Complainant describes as “the world’s first example of a combined-cycle gas plant integrated with a solar plant”.

The Complainant was founded in 1962 and its name, ENEL S.p.A., is an acronym of “Ente Nazionale per l’Energia Elettrica”, which translates as the Italian National Energy Provider.

Annexed to the Complaint were numerous press materials and newspaper and journal clippings demonstrating that the Complainant’s business in the energy field in Italy and Europe under the ENEL name is very substantial. Various clippings describe it inter alia as “the Italian power utility giant” and refer to its activities across the energy spectrum, including in solar energy.

The Complainant is the proprietor of numerous trademark registrations for marks including ENEL as the sole or dominant distinctive verbal element. Annexed to the Complaint were details of many such registrations around the world, including in particular:

- International Registration no. 893523 for ENEL & Figurative Device in Classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42, dating from June 9, 2006 and covering China, where the Respondent is based;

- International Registration no. 1005138 for ENEL & Figurative Device in Classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39, 40 and 42, dating from February 11, 2009 and extending to China as well inter alia the European Union and the United States; and

- European Community Trademark Registration no. 756338 for ENEL & Figurative Device in Classes 9, 11, 16, 19, 25, 35, 36, 37, 38, 39 and 42, filed on February 24, 1998.

The disputed domain name was created on April 6, 2011. Annexed to the Complaint were print-outs of the website linked to the disputed domain name made on January 19, 2012, showing that it was in use to host a standard pay-per-click landing page featuring Italian-language links to third-party commercial websites, mostly in the field of photovoltaic and solar energy.

This Complaint was filed on February 17, 2012.
5. Parties’ Contentions
A. Complainant

The Complainant submits that the disputed domain name is identical to its registered trademark and trade name ENEL, which it submits has been widely used and advertised for many years and is therefore well-known.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant states that the Respondent is not associated in any way with the Complainant or its distribution network, has never been commonly known by a name corresponding to the disputed domain name and has not been using the disputed domain name in relation to any bona fide noncommercial or other legitimate fair use.

Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complaint submits that its ENEL trademark and trade name are well-known internationally within the energy sector, including in relation to photovoltaic and solar energy, and that its reputation extends to China, where the Respondent is based. The Complainant contends that it is inconceivable that the Respondent would not have been aware of the Complainant and its business under the ENEL trademark and trade name when it registered the disputed domain name. The Complainant further contends that the Respondent’s use of the disputed domain name for a website offering pay-per-click links to commercial websites of competitors of the Complainant in the fields of renewable and alternative energy is further evidence of registration and use in bad faith.
B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar

The Complainant has proved that it owns trademark registrations for marks including ENEL as the sole or dominant distinctive verbal element, including in particular the ENEL & Figurative Device marks referred to in section 4 above.

The only distinctive element of the disputed domain name is the word ENEL, which is identical to the sole or dominant distinctive verbal element of the Complainant’s registered trademarks. The non-distinctive domain name suffix “.tv” does nothing to distinguish it from the Complainant’s ENEL-formative marks.

The Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests

The Complainant has not authorised the Respondent to use the disputed domain name, and the Respondent is not associated in any way with the Complainant or its distribution network. The Respondent does not appear to have been commonly known by a name corresponding to the disputed domain name. Overall, there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name, nor has the Respondent made any effort to prove that it has any.

The print-outs annexed to the Complaint show that the Respondent has used the disputed domain name for a website displaying links to commercial websites of third parties providing services in the field of energy, which is the field in which the Complainant trades. The Respondent’s website appears to be a standard pay-per-click landing site from which the Respondent is likely to have been deriving click-through income. All the links displayed are in Italian, which is the language most directly relevant to the Complainant’s business as the largest energy provider in Italy.

The only distinctive element within the disputed domain name is “enel”, which is the sole or dominant distinctive element of the Complainant’s registered trademarks and also the Complainant’s trading name. The ability of the disputed domain name to attract Internet users to the Respondent’s energy-related pay-per-click links does not appear to be based on any descriptive meaning, but rather on the ability of the disputed domain name to attract Internet users seeking information on the Complainant and its business in the field of energy supply. The Respondent’s use of the disputed domain name to host what appear to be (and what the Respondent has not denied are) pay-per-click links to competitors of the Complainant in the field of energy strongly suggests that the Respondent registered the disputed domain name in the knowledge of the Complainant’s business and has sought to gain financially from the confusing similarity of the disputed domain name with the Complainant’s trademarks.

In the Panel’s view, such activities do not amount to a bona fide commercial use of the disputed domain name. Other panelists have reached the same conclusion on similar facts (see, inter alia, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, “If [...] the links [on a given landing page] are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally […] constitute abusive cybersquatting”, and ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649, “linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, [that] instead of making a bona fide use of the domain name, [the Respondent] rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”).

The disputed domain name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate noncommercial or fair use given the presence on the linked website of pay-per-click links to competitors of the Complainant in the field of energy services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not attempted to refute the Complainant’s assertions. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant states that it has been trading since 1962, and the materials annexed to the Complaint show that it owns trademark registrations for marks in which ENEL is the sole or dominant distinctive element dating back at least as far as 1998. The media extracts annexed to the Complaint demonstrate that the Complainant’s business in the energy field in Italy and Europe under the ENEL name is very substantial and internationally known, and that it has been the subject of media commentary in high-profile international publications such as The Wall Street Journal Europe, The Financial Times, Euroweek, The International Herald Tribune, The Times and The Economist, and on the international business news website at “www.businessweek.com”, from prior to the creation of the disputed domain name on April 6, 2011.

The evidence shows that by the time the disputed domain name was registered, the name ENEL was known both in Italy and internationally as denoting the Complainant and its business as a leading Italian electricity supplier. As found in Section A above, the disputed domain name is confusingly similar to the Complainant’s registered trademarks and has been used to host pay-per-click links to commercial websites relating to energy, including links to other suppliers of services in the fields of photovoltaic and solar energy. Those links, moreover, are in Italian, the language most directly relevant to the Complainant’s Italy-based business.

These facts strongly support the Complainant’s assertion, which the Respondent has not attempted to deny, that the Respondent registered the disputed domain name in, and indeed prompted by, the knowledge of the Complainant’s trademarks and business, with the intention to gain commercially by hosting pay-per-click links whose ability to generate revenue depended on the ability of the disputed domain name to attract Internet users seeking information on the Complainant.

The Panel concludes that the disputed domain name was registered and has been used in bad faith under paragraph 4(b)(iv) 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.tv- be transferred to the Complainant.

Angela Fox
Sole Panelist
Dated: April 4, 2012