Eni S.p.A., established in 1953 as a public economic entity on the initiative of the Italian State and under the leadership of Enrico Mattei, who served as its chairman until 1962, was subsequently transformed into a joint-stock company in 1992.
The company is now one of the leading multinational groups operating in the global energy sector. Eni currently operates in over 60 countries and, as of 2025, employs more than 32,000 people. The Group is universally recognized by its well-known “six-legged dog” logo, an iconic symbol with a high level of market recognition.
The Group’s activities span the entire energy value chain and include the oil and natural gas sectors, the chemical and biochemical sectors, as well as the generation and sale of electricity, both from fossil fuels and from cogeneration and renewable sources.
From an economic and industrial perspective, Eni has long been Italy’s leading company by turnover, particularly during the period 2003–2013, as well as in 2018 and again in the three-year period 2023–2025, confirming its position of absolute prominence at both the national and international level.
The Respondent is a company engaged in the retail sale of fuels and lubricants since 1973. Said company entered into a business relationship with the Complainant. Said relationship is regulated by:
(i) a Business Lease Agreement dated November 7, 2005, under which the Complainant granted the Respondent the lease of the business unit consisting of the café and bar premises located within a service station situated in San Giuseppe (Ferrara) - Italy.
(ii) a Loan for Use Agreement dated December 30, 2009, under which the Complainant granted the Respondent the use of the assets comprising the fuel distribution station for a period of six years. The agreement was subsequently renewed until 2021 and, most recently, until December 29, 2027.
(iii) a Business Lease Agreement for roadside service areas with commercial affiliation dated May 13, 2016, under which the Complainant renewed, for a further six-year term, the lease of the business unit forming part of the ENI Café & Shop system. The leased business included the operation of a café, the sale of food and beverages, and a retail market offering regional food products under a franchising system forming part of ENI's nationwide network of service station outlets.<\/p>\n
On November 4, 2017, the Respondent registered the disputed domain name <enicafe.com>.<\/p>", "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.<\/p>", "no_response_filed": "
COMPLAINANT:
The Complainant submits sufficient evidence in order to prove its trademark rights on the term ENI.<\/p>\n
Furthermore, the Complainant contends, in relevant part, as follows:<\/p>\n
- The disputed domain name <enicafe.com> is confusingly similar to the Complainant trademarks as the trademark ENI is identically reproduced and the addition of the generic term CAFE is not sufficient to avoid the likelihood of confusion.<\/p>\n
- The Respondent has no rights or legitimate interests in respect of the disputed domain name <enicafe.com> because:
(i) the Respondent does not own any trademark corresponding to the sign ENI or ENICAFE, nor is it commonly known by those names;
(ii) neither license nor authorization has been granted to the Respondent to make any use of the Complainant trademarks or apply for registration of the disputed domain name by the Complainant; on the contrary, the contractual relationship between the parties clearly indicates that the license of use in that contractual relationship cannot be intended as a transfer of rights or as the grant of an independent licence to use the trademarks.<\/p>\n
- The disputed domain name has been registered and used in bad faith because the Respondent registered the disputed domain name with actual knowledge of the Complainant´s trademark, which enjoys an extremely high reputation, as it is a well-known trademark, and since the Respondent demanded the exorbitant amount of EUR 10 million for the transfer of the disputed domain name. <\/p>\n
RESPONDENT:
The Respondent contends, in relevant part, as follows:<\/p>\n
- The disputed domain name <enicafe.com> was never registered in order to appropriate the ENI trademark, nor to resell it, mislead Internet users, host competing advertising, or divert customers. On the contrary, the domain name was created and has always been used solely and exclusively to promote a genuine ENI service station, namely the one operated by the Respondent.<\/p>\n
- The disputed domain name <enicafe.com> was registered since the service station operated by the Respondent was difficult to identify because, due to ENI's negligence and prolonged inaction, there was no adequately visible \"ENI Café\" sign, neither on the fuel station canopy nor on the café itself. The sole purpose of said registration was to enable motorists to find the service station through Google, and certainly not to speculate on the sale of the domain names or, even less, to prevent ENI from using its own trademarks or distinctive signs, particularly the ENICAFÉ trademark, which the Complainant itself has not registered until 2025.<\/p>\n
- Contrary to the Complainant’s view concerning the Respondent's alleged lack of any right to use the trademarks of the Complainant, the Complainant itself, refers to the Franchise Agreements (reproduced in the Business Lease Agreement), which specifically regulate the use of ENI's distinctive signs and expressly provide that the franchisor grants the franchisee a limited and non-exclusive right to use those signs strictly for the purposes of performing the contractual relationship.<\/p>\n
- According to the Respondent, the trademark is not used to obtain an unfair advantage from any likelihood of association between different undertakings, since a genuine commercial relationship already exists between the trademark owner and the holder of the domain name incorporating that trademark.<\/p>\n
- In addition, in the Respondent's view it does not prejudice the value of the trademark or unfairly exploit its distinctive character or reputation, particularly considering that the right to use the trademark was granted free of charge under the loan-for-use agreement and the business lease agreements executed within the franchising relationship.<\/p>\n
- The Respondent notes that the disputed domain name does not discredit or tarnish the ENI trademark. On the contrary, the ENICAFÉ Service Station in San Giuseppe di Comacchio recently received an official recognition from the Mayor of Comacchio for its business activity, as demonstrated by the publicly available award ceremony video.<\/p>\n
- The Respondent also insists that there was never any attempt to negotiate. The valuation report, in itself, does not demonstrate that the domain name was registered in 2017 for speculative purposes. It merely represents a subsequent economic assessment. A valuation prepared years after registration cannot retroactively transform a lawful registration into one made in bad faith.<\/p>\n
- Finally, the Respondent outlines that the Complainant was fully aware of the existence of the disputed domain name from the very beginning since, during March 2018, immediately after the website had been completed, the Respondent sent the website link connected with the domain name in dispute, directly to ENI's area manager.<\/p>\n
<\/p>", "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).<\/p>", "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).<\/p>", "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).<\/p>", "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.<\/p>", "decision": "Accepted", "panelists": [ "Guido Maffei" ], "date_of_panel_decision": "2026-07-27 00:00:00", "informal_english_translation": "
The Complainant owns various trade mark registrations worldwide for its ENI trade mark including, in particular, EUTM 009093683 filed on December 5, 2007, registered on April 27, 2010 and duly renewed for goods and services included 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.<\/span><\/p>\n <\/span><\/p>",
"decision_domains": {
"enicafe.com": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}