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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eni S.p.A v. Adam White

Case No. D2007-0364

 

1. The Parties

The Complainant is Eni S.p.A., Rome, Italy, represented by NCTM Studio Legale Associato, Milan, Italy.

The Respondent is Mr. Adam White, Coventry, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <enioil.com> and <eni-oil.com> (hereinafter referred to as the “Domain Names”) are registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2007. On March 14, 2007, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain names at issue. On March 15, 2007, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 22, 2007. No Response was submitted to the Center, and the notification of Respondent Default was notified to the Parties on April 12, 2007.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on April 27, 2007. 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

The Complainant is an international company, having its business in the field of oil, natural gas, electricity, engineering, construction and petrochemistry.

The Complainant is the holder of the trademark device ENI (hereinafter referred to as the “Trademark”), registered with the Office for Harmonization of the Internal Market on January 23, 2001, and registered with the World Intellectual Property Organization on January 21, 2001 for goods in several classes, including industrial oil, chemicals and metals.

The Complainant is the holder of the domain name <eni.it>.

The Respondent registered the Domain Names on May 26, 2004.

On April 13, 2006, Respondent sent an e-mail to Enioil Limited (“Enioil Ltd.”), a subsidiary of the Complainant established in the Bahamas. In his e-mail Respondent stated the following:

“I am the owner of “ENIOIL.COM” and “ENI-OIL.COM” domain name.

[… ]

Many of your organization’s suppliers, vendors, contractors, and may be friends are sending (by mistake) emails to my domains “ENIOIL.COM” and ‘ENI-OIL.COM’.

The emails that I used to receive contain specifications, quotations, tenders, commissions negotiations, etc., it is very clear that I can make money out of these emails especially were competitors are involved.

Honestly I hate reading and analyzing your e-mails, so I prefer selling the domains either to your organization or to any one interested in using ‘ENIOIL.COM’ and ‘ENI-OIL.COM’ domain names for any purpose. I can send you an official quotation if you are interested in buying the domain names.

[….]”

On June 6, 2006, the Complainant’s representative sent a cease and desist letter to Respondent, inviting Respondent to immediately cease and desist the use of the Domain Names and to transfer the Domain Names to the Complainant.

The Respondent did not respond to the Complainant’s cease and desist letter””

 

5. Parties’ Contentions

A. The Complaint

Identical or Confusingly Similar

The Complainant contends that the Domain Names are identical or confusingly similar to the company names of the Complainant and Enioil Ltd. Furthermore, the Complainant contends that the Domain Names are identical or confusingly similar to the Trademark. In this respect the Complainant contends that the Trademark and the Complainant’s name Eni are well known and notorious throughout the world, and that the addition of “oil.com” does not decrease the likelihood of confusion.

Rights or Legitimate Interests

The Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the Domain Names and that the Complainant has not licensed, permitted, authorized or consented to Respondent’s use of the Trademark and the Eni company name in the Domain Names.

Registered and Used in Bad Faith

The Complainant alleges that Respondent has registered the Domain Names primarily in violation of paragraph 4(b)(i) of the Policy (registration for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket expenses directly related to the domain name). According to the Complainant, this is substantiated by the fact that the Respondent offered to sell the Domain Names and the fact that the Domain Names were never used.

In addition, the Complainant contends that it is inconceivable that the Respondent was unaware of the Trademark and the word Eni in its company name. According to the Complainant, the Domain Names were registered in bad faith since the Domain Names show actual knowledge of the Complainant’s rights.

B. The Response

The Respondent did not file a Response.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence of its rights to the Trademark and the fact that it is widely-known throughout the world.

The disputed Domain Names are confusingly similar to the Trademark, since the “.com” suffix only indicates that the disputed domain name is registered on the “.com” gTLD and the addition of “oil” does not alter (and additionally might even increase) the confusion, since the Complainant operates in, amongst others, the field of oil.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:

(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 non-commercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent has, by not responding to the Complaint, chosen not to provide any tangible evidence of any right to the name ‘enioil’ or ‘eni-oil’. There is no evidence which shows that the Respondent has any rights or legitimate interest in the Domain Names or that the Respondent is commonly known by the name ‘eni-oil’ or ‘enioil’.

In the light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Complainant is relying on paragraph 4(b)(i) of the Policy, which provides that sufficient evidence of bad faith may consist of “circumstances indicating that the Respondent has registered the domain name primarily for the purpose of selling or renting it to the Complainant for a monetary consideration in excess of the Respondent’s out-of-pocket expenses directly related to the domain name”.

The Panel finds that these circumstances are present here.

The Complainant has substantiated that it is a widely-known energy company throughout the world, with considerable business in the United Kingdom (the country in which the Respondent is residing). It is therefore likely that the Respondent was acquainted with the Complainant’s name and the Trademark.

This is underlined by the fact that the Respondent registered the Domain Names, combining Eni with the word ‘oil’. There is no (obvious) objective reason why the Respondent would register the Domain Names, other than that the Respondent was aware that (i) the name Eni is the trademark and company name of a well known company that operates, amongst others, in the field of oil and/or (ii) its affiliate is named Enioil Ltd. The Respondent never used the Domain Names.

These facts indicate that the registration of the Domain Names occurred in bad faith.

The bad faith use of the Domain Names is substantiated by the e-mail that was sent by the Respondent to Enioil Ltd. on April 13 2006. In this e-mail the Respondent stated that he had received emails from “many of [the Complainant’s] suppliers, vendors, contractors and maybe friends” who were sending “specifications, quotations, tenders, commissions, negotiations etc.” to an email address connected to the Domain Names. The Respondent then states: “it is clear that I can make money out of these emails especially where competitors are involved.” The Respondent then professes to “prefer selling the domains either to your organization or to any one interested in using [the Domain Names] for any purpose.”

Although no specific asking price is mentioned in this email, it is clear from the email that the Respondent is seeking to profit from the sale of the Domain Names.

This is evidenced by the fact that the Respondent states that he receives emails addressed to the Complainant, containing confidential company information and that (because of this fact) he can make money with these emails, especially where competitors are involved.

This appears to be a hardly veiled threat to sell to the Complainant’s competitors confidential information concerning the Complainant, which has been obtained through the confusion between the Domain Names and the Complainant’s company and/or Trademark. By subsequently offering the Domain Names for sale to the Complainant (or “to any one interested” in using them) it is apparent that the Respondent is seeking a price well in excess of the out-of-pocket registration costs.

The Panel, therefore, concludes that there is sufficient evidence that the Respondent’s registration and use of the domain names <enioil.com> and <eni-oil.com> is in bad faith.

7. Decision

On the basis of the foregoing, the Panel decides that the Complainant has provided the required evidence to request a transfer of the domain names <enioil.com> and <eni-oil.com> from the Respondent to the Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules the Panel orders the registration of the domain names <enioil.com> and <eni-oil.com> be transferred to the Complainant.


Wolter Wefers Bettink
Sole Panelist

Dated: May 14, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0364.html

 

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