Decision for dispute CAC-UDRP-108193

The Panel is not aware of other pending or decided legal proceedings that relate to the disputed domain name.

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant states that it is the owner of the, among others, following trademark registrations:

• EU trademark registration No. 009093683 “ENI”, registered on 27 April 2010, for goods and services in classes 1, 2, 3, 4, 6, 7, 9, 11, 14, 16, 17, 18, 19, 22, 35, 36, 37, 39, 40, 41, 42, 43, 44 and 45;
• EU trademark registration No. 011374287 “you & eni”, registered on 4 June 2013, for goods and services in classes 4, 9, 35 and 36;
• EU trademark registration No. 012554929 “ENI”, registered on 30 July 2014, for goods and services in classes 2, 6, 9, 17 and 36;
• African trademark registration No. 1/071207 “ENI I-SIGMA”, registered on 28 September 2012, for products in class 4;
• African trademark registration No. 1/071209 “ENI I-BASE”, registered on 28 September 2012, for products in class 4;
• African trademark registration No. 1/071998 “ENI I-RIDE”, registered on 31 January 2013, for goods in class 4;
• US trademark registration No. 4730039 “ENI”, registered on 5 May 2015, for products and services in classes 1, 4, 6, 17, 36, 37, 39, 40 and 42;
• US trademark registration No. 4730040 “ENI”, registered on 5 May 2015, for goods and services in classes 1, 4, 6, 17, 36, 37, 39, 40 and 42
• International trademark registration No. 1067838 “ENI MULTICARD“, registered 29 September 2010, for goods and services in classes 9, 16 and 36;
• International trademark registration No. 1070437 “ENI TRUCK PASS“, registered 29 September 2010, for products and services in classes 9, 16 and 36.

The Complainant proved its ownership of the aforementioned trademark registrations by the submitted extracts from the EUIPO, the African Intellectual Property Organization, the USPTO and the WIPO databases.

The Complainant states that Eni S.p.A. is an Italian multinational oil and gas company, present in 79 countries, and currently Italy's largest industrial company with a market capitalization of 87,7 billion euros (US$138 billion), as of 24 July 2008. The Italian government owns a 30.3% golden share in the company, 3.93% held through the state Treasury and 26.37% held through the Cassa depositi e prestiti. Another 2.29% of the shares are held by BNP Paribas group. The word "ENI" was initially the acronym of "Ente Nazionale Idrocarburi" (national hydrocarbons authority). Through the years after its foundation, however, it operated in a large number of fields including contracting, nuclear power, energy, mining, chemicals and plastics, refining/extraction and distribution machinery, hospitality industry and even textile industry and news. Eni is classified by sales as "supermajor" together with BP, Chevron, ExxonMobil, ConocoPhillips, Shell and Total S.A.

As a support of the aforementioned information, the Complainant submitted numerous materials from which it is clear that the Complainant is widely and globally known in the chemical industry.

The Complainant is also the registrant of numerous trademarks and domain names containing its trademark “ENI”.

The international reputation of the Complainant outside the oil and gas industry is emphasized by the sponsorship of numerous international motorsport events.

The disputed domain name <enispaandoilgas.com> (hereinafter “disputed domain name”) was registered on 5 December 2024. According to the Registrar, the Respondent is ‘Joseph Adediran’. The Respondent provided an address as being in the US.

COMPLAINANT:

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

RESPONDENT:

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

In the present case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. Therefore, the Panel proceeds to decide only on the basis of the Complainant’s factual statements and the documentary evidence provided in support of them [Paragraph 5(f) of The Rules].

1. CONFUSING SIMILARITY

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The WIPO Overview 3.0 in Paragraph 1.2.1 states: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

The WIPO Overview 3.0 in Paragraph 1.7 states: “[…] in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The WIPO Overview 3.0 in Paragraph 1.8 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. […]”

The WIPO Overview 3.0 in Paragraph 1.11.1 states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., ”.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”

In the present case, the Complainant has established that it owns numerous national, regional and international trademark registrations for the “ENI” term, protected for the classes in connection with the chemical industry (evidenced by the registration certificates and extracts from the EUIPO, the African Intellectual Property Organization, the USPTO and the WIPO databases). “ENI” term is also part of some composed trademarks, e.g. “ENI I-RIDE” or “ENI I-BASE”.

The “ENI” term itself was initially the acronym of "Ente Nazionale Idrocarburi" (national hydrocarbons authority).

In addition to the term “eni”, other generic and descriptive terms such as “spa”, “and”, “oil” and “gas” can be recognized in the disputed domain name <enispaandoilgas.com>. Especially “oil” and “gas” clearly refer to major part of the Complainant’s globally known business activities. The addition of these terms does not prevent the finding of confusing similarity of the disputed domain name with the Complainant’s trademark.

The “.com” element of the disputed domain name does not affect the finding of confusing similarity.

Therefore, the disputed domain name is considered to be confusingly similar to the relevant trademark.

As a result, the Panel finds that the Complainant has satisfied Paragraph 4(a)(i) of the UDRP.

2. THE RESPONDENT´S LACK OF RIGHTS OR LEGITIMATE INTEREST IN THE DISPUTED DOMAIN NAME

The Panel finds that the Respondent lacks rights or legitimate interest in the disputed domain name.

According to Paragraph 4(a)(ii) of the UDRP, the Complainant shall make a case that the Respondent lacks rights and legitimate interests in the disputed domain name. If the Complainant fulfils this demand, the burden of proof shifts to the Respondent and so the Respondent shall demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to prove its rights or legitimate interests, it is assumed that the Complainant satisfied the element of Paragraph 4(a)(ii) of the UDRP (see CAC Case No. 102430, Lesaffre et Compagnie v. Tims Dozman). Moreover, past panels were of the view that it is difficult or sometimes impossible to prove negative facts, i.e., absence of rights or legitimate interest on the part of the Respondent. In this respect, past panels referred to the WIPO Case No. D2000-1769, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni. Within the meaning of Paragraph 4(a)(ii) of the UDRP, once the complainant has made something credible (prima facie evidence), the burden of proof shifts to the Respondent to show that he has rights or legitimate interests in the domain name at issue by providing concrete evidence.

The WIPO Overview 3.0 in Paragraph 2.5.1 states: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.“

In the Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com>, the Panel stated: “Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).”

The Complainant claims that the Respondent has changed his website connected to the domain names quite a few times in an attempt to avoid being perceived as doing business under the “ENISPAANDOILGAS” trademark. The Complainant assumes that there is a commercial intention by the Respondent to use or threaten to use the disputed domain name in the energy sector. According to the Complainant, this is a definite diversion of potential Complainant’s consumers from Eni websites and cannot be considered a bona fide offering of goods and services.

The Complainant states that the Respondent’s use of the domain is in no way a bona fide offering of goods and services, and this only emphasizes the fact that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent has no registered trademark rights in the word “ENI” and there is no evidence at all that the Respondent is commonly known by the disputed domain name. Furthermore, the Complainant has never authorized the Respondent to use “ENI” in his domain names. On the contrary, as herein already mentioned, the Respondent has set up a websites that take advantage of the reputation and long-standing history of the “ENI” trademarks also with regard to the energy sector.

The Complainant asserts that the Respondent has not been licensed or otherwise authorized to use any of the Complainant’s trademarks or to apply for or use any domain name incorporating such trademarks.

The Respondent did not file any Response to the Complaint. Thus, the Respondent failed to demonstrate rights or legitimate interest in the disputed domain name.

To the satisfaction of the Panel, the Complainant made a prima facie case that there is no connection between the Complainant and the Respondent and that the Respondent does not have authorization in the disputed domain name or in the trademark “ENI” from the Complainant.

Moreover, the identity of the Respondent is hidden in the submitted WHOIS information of the disputed domain name. Therefore, the Respondent cannot be commonly known by the disputed domain name.

The Panel is of the view that the Respondent has no rights or legitimate interest in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under Paragraph 4(a)(ii) of the UDRP.

3. THE REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The Panel finds that the Respondent registered and uses the disputed domain name in bad faith.

The WIPO Overview 3.0 in Paragraph 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith […].“

In the present case, the Complainant has established that it owns numerous national, regional and international trademark registrations for the “ENI” term, protected for the classes in connection with the chemical industry (proved by the registration certificates and extracts from the EUIPO, the African Intellectual Property Organization, the USPTO and the WIPO databases).

The disputed domain name is found confusingly similar. This finding indicates the bad faith of the Respondent.

Because of the Complainant’s worldwide business activities and proven global recognition of the Complainant’s trademarks, the Panel is of the opinion that the Respondent must have been aware of the Complainant, its trademark and business activities at the moment of registering the disputed domain name on 5 December 2024.

Moreover, as mentioned earlier, according to the respective WHOIS information, the identity of the Respondent is hidden and so the Respondent cannot be known under the disputed domain name.

Following the aforementioned, the Panel finds that the Respondent’s intention in registering the disputed domain name is to divert consumers or to hinder and damage the commercial activities of the Complainant.

Since the Respondent did not respond to either the Complainant’s letter or to the Complaint, no evidence in favour of the Respondent was submitted. At the same time, no good faith can be found in such inactivity.

Therefore, the Panel is of the view that the Respondent did not register and is not using the disputed domain name in good faith.

Following the above-mentioned, the Panel finds that the Complainant has satisfied conditions pursuant to Paragraph 4(a)(iii) of the UDRP.