{
    "case_number": "CAC-UDRP-101904",
    "time_of_filling": "2019-06-24 10:39:34",
    "domain_names": [
        "ENIEXPLORATION.COM"
    ],
    "case_administrator": "Denisa Bilík (CAC) (Case admin)",
    "complainant": [
        "ENI S.p.A."
    ],
    "complainant_representative": "desimone & partners",
    "respondent": [
        "Eni Geotechnics and Exploration services Limited"
    ],
    "respondent_representative": "oluwaseye taiwo",
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant, ENI (Ente Nazionale Idrocarburi) was established in 1953.   Formerly a public corporation, ENI has recently been converted into a joint stock company.  In 2011, ENI was ranked 23rd by CNN Money.com in its list of  “GLOBAL 500 of the world largest corporations” and was one of the top 10 listed oil companies.  It has operations in 79 countries, including in Nigeria, where it has been present since 1962, and where it has extensive interests in onshore and offshore exploration and production but also promotes other economic, educational and environmental projects.  \r\n\r\nThe Respondent, ENI Geotechnics and Exploration Services Limited, is a company incorporated on under the laws of Nigeria and holds official accreditations to provide certain geotechnical and environmental solutions services to oil and gas companies in Nigeria.  It was established on 15 April 2011.  The Respondent is not connected with the Complainant.  The Respondent is now the registrant of the disputed domain name <eniexploration.com>, which was registered on 25 May 2011.  The disputed domain name is linked to the Respondent's active website, on which it presents and promotes its business and services.  ",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.  ",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant alleges that the Respondent is linked to another company, Clairgold Oil and Gas Engineering Ltd (\"Clairgold\"), with which it shares its address and telephone number.  The Respondent's website acknowledges that: \"ENI emerged from Clairgold oil and gas engineering [sic] Ltd a major player in the oil and gas industry\".  The Complainant believes that Clairgold is the de facto owner of the disputed domain name, and that it created the Respondent as a shadow company, whose name corresponds to the well-known brand name ENI owned by the Complainant, in order to hide its real identity.  The Complainant's case is that there is an overlap between the Respondent's and the Complainant's activities because the Complainant carries out exploration activities in Nigeria; and that Clairgold set up the website linked to the disputed domain name in order to misleadingly divert consumers and take advantage of the reputation and long-standing tradition of the ENI trademarks.  \r\n\r\nFurthermore, the Complainant states that Clairgold previously attempted in 2015 and 2016 to register the trademark ENI in class 04 and class 16 in Nigeria in its own name but failed to succeed with its applications after the Complainant commenced opposition proceedings.  Nevertheless, the Respondent still uses the trade mark ENI on the website accessed through the disputed domain name. \r\n\r\nWith regard to confusing similarity, the Complainant argues that the disputed domain name <eniexploration.com> is confusingly similar to, and completely includes, the Complainant's protected trademark ENI.  The addition of generic descriptive terms, such as \"exploration\", is insufficient in the Complainant's view to avoid a finding of confusing similarity, in particular, because exploration is one of the sectors in which the Complainant is active in Nigeria.  The Complainant refers to WIPO case law in support of the proposition that the distinctive trademark ENI forms the dominant or principal component of the disputed domain name.  The Complainant further asserts that the trade mark ENI is well-known both internationally and in Nigeria.   \r\n\r\nThe Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name.  The Respondent has no registered trademark rights in the word ENI and, indeed, failed in its attempts to register that name as a trademark in Nigeria.  Given the overlap in the activities of the Respondent and the Complainant, the use of the disputed domain name by the Respondent will mislead consumers who may erroneously believe that the Respondent is affiliated with the Complainant when this is not in fact the case.  The Respondent's use of the disputed domain name also cannot be construed as constituting legitimate fair use in circumstances where it wrongly suggests an association with the trademark owner for commercial gain.  The Complainant believes that the Respondent has set up the website accessed through the disputed domain name in order misleadingly to divert consumers and to take unfair advantage of the reputation and long-standing history of the ENI trademark in the geotechnics and exploration sector.    \r\n\r\nFurthermore, the Respondent has not been licensed or otherwise authorised to use any of the Complainant’s trade marks, or to apply for or use any domain name incorporating such trade marks.\r\n\r\nFinally, with regard to bad faith, the Complainant asserts that the Respondent must not only have necessarily been aware of the Complainant's business and well-known trademarks but refers to the subsequent attempts by Clairgold to register the name ENI as a trademark in Nigeria as further evidence of the Respondent's attempts to exploit the Complainant's reputation in bad faith.  The Complainant alleges that the Respondent intentionally sought to use the Complainant's trademark as part of the disputed domain name in order to attract internet users to its website for commercial gain by creating confusion as to the existence of an affiliation or relationship between the parties.  \r\n\r\nFinally, the Complainant points to the fact that, in response to a warning letter sent by the Complainant in May 2018, the Respondent offered to sell the disputed domain name to the Respondent for a very substantial sum of money.  \r\n\r\nRESPONDENT:\r\n\r\nThe Respondent asks the Panel in limine to reject the complaint on procedural grounds, namely, on the grounds that it discloses no cause of action against the Respondent of record.  The Respondent points to the fact that much of the complaint is concerned with allegations as to the conduct and actions of Clairgold, which the Complainant alleges to be the true owner of the disputed domain name, but which is not a party to these administrative proceedings.  The acts complained of by the Complainant are not the acts of the Respondent but those of Clairgold.  It is not sufficient for the complaint to succeed that there is simply a connection between the Respondent and Clairgold if they are two separate legal entities.  Indeed, the Respondent regards the amended complaint and supporting evidence as being \"frivolous and vexatious\".  \r\n\r\nAs to the substance of the Complainant's case, the Respondent states that the disputed domain name and the associated website have been used consistently since 2011 in connection with the bona fide offering of services by the Respondent.  The Respondent is duly incorporated under the laws of Nigeria, has over the years established itself as a leader in the provision of services to the oil and gas industry in Nigeria, and counts an array of blue chip companies amongst its clientele.  The Respondent refers to a list of projects executed for major clients in support of these submissions.  \r\n\r\nThe Respondent further states that it has in its years of existence developed a well established business and has built enormous goodwill in the Nigerian oil service sector.  The Respondent has also scrupulously maintained regulatory compliance with industry regulators and has obtained all necessary approvals, permits, licences and accreditations required for the lawful operation of its business.  \r\n\r\nThe Respondent concludes from these facts that it has demonstrated rights or legitimate interests in the disputed domain name as linked to the website of a bona fide business.  \r\n\r\nThe Respondent further asserts that it has been widely and commonly known by, and has acquired unsurpassed reputation and goodwill in, the disputed domain name.  The disputed domain name is therefore associated by the public exclusively with the Respondent.  The Respondent has been developing consumer recognition and goodwill in its domain name for a period of more than 8 years, during which the Complainant did nothing to stop the Respondent.  The Complainant should therefore be barred by laches, acquiescence and estoppel from disputing the domain name now.  \r\n\r\nAs to bad faith, the Respondent denies that there is any likelihood of confusion, mistake, or deception because the disputed domain name and the Complainant's trademarks are not confusingly similar.  The Complainant has not shown any trademark registration with which the disputed domain name is either identical or confusingly similar.  The prefix \"Eni\" in the Respondent's company name and the disputed domain name is an abbreviated form of the family name of the founder of the Respondent, Mr Asek Enilama, who used a short version of his family name in good faith.  The Respondent further states that the pre-fix \"Eni\" is widely and commonly used in Nigeria, as it corresponds to the names of individuals, families and communities.  The Respondent then refers in its submissions to a list of third party businesses using \"Eni\" formative company names.  According to the respondent, the font of the name ENI and logo displayed on the Respondent's website further distinguish the Respondent's use of the name ENI from the Complainant's trademarks.\r\n\r\nWith regard to the attempts by Clairegold to register the name ENI as a trademark in Nigeria, the Respondent states that the opposition proceedings are ongoing and that it is in fact the Complainant, who abandoned its opposition to these applications.  Also, in response to the Complainant's warning letter, the Respondent initially asserted its rights in the disputed domain name before making an offer to sell the domain name as part of settlement negotiations initiated by the Complainant.  It is therefore incorrect of the Complainant to assert that the Respondent acquired the domain name for the purpose of selling it to the Complainant.  \r\n",
    "rights": "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 Policy).",
    "no_rights_or_legitimate_interests": "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 Policy).",
    "bad_faith": "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 Policy).",
    "procedural_factors": "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.",
    "decision": "Accepted",
    "panelists": [
        "Gregor Kleinknecht"
    ],
    "date_of_panel_decision": "2020-01-03 00:00:00",
    "informal_english_translation": "The Complainant owns an extensive portfolio of ENI and ENI formative word and word\/device trademarks and domain names, comprising of approximately 2,000 trademarks and 500 domain names.  The Complainant's trademarks are registered around the world, including by the USPTO, EUIPO, and as WIPO international trademarks (including coverage of Nigeria).  The name ENI was registered as a European Trade Mark with registration number 009093683 in international classes 1, 2, 3, 4, 6, 7, 9, 11, 14, 16, 17, 18, 19, 22, 35, 36, 37, 39, 40, 41, and 42 on 27.4.2010.  The Complainant further uses the domain name <ENI.com>, which is connected to the official website of the Complainant.  ",
    "decision_domains": {
        "ENIEXPLORATION.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}