WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Automobili Lamborghini Holding S.p.A v. OneandOne Private Registration, and Jill Calangian Case No. D2008-1443 1. The Parties
The Complainant is Automobili Lamborghini Holding S.p.A, c/o AUDI AG, Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondents are Oneandone, Private Registration, 1&1 Internet, Inc., of Pennsylvania, United States of America, and Jill Calangian, of Daly City, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2008. On September 23, 2008, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On September 25, 2008, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 6, 2008.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on October 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2008.
On October 28, 2008, the Center received an email from the email address which the Registrar had provided for Ms. Calangian (“the Email Address”) seeking an extension of time to file a Response on the ground that the author's attorney would be out of the country until November 15, 2008. The Center sought comment from the Complainant on that request, by November 3, 2008.
On October 30, 2008, the Center received a second email from the Email Address, seeking clarification on what would happen if the Complainant objected to the request for an extension of time and the Center then declined to grant an extension. The October 30, 2008 email went on to say:
“I do not want to lose my rights in this matter. Complainant is making false statements and was advised on August 13 to contact my attorney. Complainant did not contact my attorney and instead filed their WIPO Complaint with false information claiming I did not respond to them, which you can see from the attachment is clearly untrue.
…Because WIPO sent me the full Complaint and I do not want to lose my rights in this matter, I will briefly respond to the other issues in this matter. Please accept the following Response if my Extension Request is denied.”
A copy of an email dated August 13, 2008, from the Email Address to the Complainant's representative, with contact details for the author's attorney, was attached with the October 30, 2008 email from the Email Address to the Center. The August 13, 2008 email to the Complainant's representative stated:
“Hello you may contact my attorney if you wish to pursue this matter.”
The email to the Center dated October 30, 2008, having stated the author's position as described above, went on to set out a substantive Response to the Complaint.
On November 3, 2008, the Complainant's representative sent an email to the Center opposing the request for an extension of time. The email from the Complainant's representative alleged that the Respondents had begun to change the content on the website at the Domain Name.
By email dated November 5, 2008, the Center extended the time for the Respondents to file a Response to the Complaint, to November 10, 2008.
No formal response having been received by that date, the Center on November 11, 2008 issued a Notice of Respondent Default.
The Center received a further email from the Email Address, on November 17, 2008. The author referred to the email of October 30, 2008 and asserted that that email constituted a timely Response and the Respondents were therefore not in default. A further copy of the October 30, 2008 email was supplied with the November 17, 2008 email, with a request that it be made available for the Panel's consideration. On November 18, 2008, the Center confirmed to the parties that the email dated October 30, 2008 would be brought to the attention of the Panel when appointed.
None of the emails from the Email Address to the Center disclosed the identity of the author or authors, and neither the email dated October 30, 2008 nor the November 17, 2008 email included the certificate which is required to be included in a response to a complaint (Rules, paragraph 5(b)(viii)).
The Center appointed Warwick Smith as the sole panelist in this matter on November 21, 2008. 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
The Complainant is an Italian manufacturer of high performance sports cars. It was founded in 1963. It is now a wholly-owned subsidiary of the German car manufacturer, Audi AG.
The Complainant is in turn the holding company of a number of companies described as the “Lamborghini Group”, one of which, Automobili Lamborghini S.p.A., is the manufacturer of the sports cars.
According to the Complaint, the Complainant employs 930 employees. It produced 2,500 cars in the 2007 year, and group revenue for that year totaled €404 million.
The Complainant says that its top model currently is the “Reventon”. It is said to capture the exclusive image and quality of Lamborghini products, and it is characterized in the Complaint as a “super sports car”. The Complainant decided to limit the production of the Reventon to 20 cars, emphasizing (as the Complaint put it) that the Reventon is a “limited edition masterpiece”. The Reventon sells for €1 million.
The Complainant produced with its Complaint an extract from the website at “”, printed on September 2, 2008. The extract consisted of an article featuring brand new pictures of the Lamborghini Reventon. The article stated that the Reventon won the award for “World's Most Beautiful Automobile 2007”, after being introduced at the Frankfurt motor show. The article noted that only 20 Reventons had been built, but did not state when the first Reventon was built, or when the model received its first substantial publicity.
The Complainant says that it spends millions of Euros on global advertising and promotion each year. Lamborghini cars have also featured in movies seen by millions of movie-goers worldwide, and the Complainant says that a Google search on “Lamborghini” resulted in approximately 57 million hits. The first 50 of those hits mostly linked to websites dealing with the Complainant's cars (whether sites concerned with the trading of cars, or fan sites).
The Complainant's group promotes Lamborghini cars on the Internet at a website at “”.
The Complainant's Trademarks and Domain Name
The Complainant says that it is the owner of a large number of national and international LAMBORGHINI marks. It is not necessary to refer to them all. It is sufficient for present purposes to note that the Complainant is the registered proprietor of the word mark LAMBORGHINI in the United States of America in international class 12, in respect of automobiles and their structural parts. The application for that registration was filed on January 16, 1990, and it proceeded to registration on November 13, 1990. The extract from the database maintained by the United States Patent and Trademark Office (“USPTO”), records a claimed first use in commerce for this mark, in 1965.
The Complainant has applied to register “Reventon” as a word mark in the United States of America. The extract from the USPTO database which the Complainant produced, shows that the application was filed on January 31, 2008. The application does not yet appear to have proceeded to registration.
The Complainant refers to a number of panel decisions decided under the Policy, in which the Complainant's LAMBORGHINI mark has been acknowledged to be a well-known trademark with a strong reputation.
The Respondents and the Domain Name
The Domain Name was registered on September 13, 2007.
The Complainant produced an extract from the website at the Domain Name (“the Respondents' website”), printed on August 28, 2008. The extract consisted of a single page, comprising what appeared to be sponsored links to the third party websites. One of the links was a link to the website at “”. The Complainant produced a copy of a page from the website at “”, printed on September 18, 2008. The page features Ferrari cars. Ferrari is Complainant's main competitor in the luxury sports car market. Other links led to websites unrelated to the Complainant's product (for example, the Complainant says that the link to the website at “www.randyrun” was to a website offering computer games and related services).
The page from the Respondents' website printed on August 28, 2008, contained a sedoparking web address, suggesting that the Domain Name had been parked with that company. At the top of the page, immediately below the Domain Name, appeared the statement: “This domain name has just been registered”.
The Complainant says that it has not granted the Respondents any license to use its trademarks or name that would have authorized the registration of the Domain Name.
The informal Response contained in the email to the Center dated October 30, 2008, stated that the author had proof that he or she began developing a non-commercial blog, to be used in connection with the Domain Name, in September 2007. The author went on to say that he or she had no ads on the Respondents' website, and that the “parking page” which constituted the Respondents' website was automatically generated by the Registrar; the author did not have control over the content or links shown by the Registrar. The author of the October 30, 2008 email also denied receiving any compensation from the Registrar for the display of the click-through links which were appearing on the Respondents' website. The email went on to say that, when the Complainant voiced an issue over the displayed links to websites featuring the cars of competitors, the author contacted the Registrar to have the parking page removed. The email stated that the Domain Name had been temporarily redirected to the website at “”, which is a fan site. It was claimed that no compensation was received for this redirection.
The October 30, 2008 email went on to explain that the planned non-commercial blog had not then linked to the Domain Name “because of the pending issues”. The email stated:
“If I am allowed to keep the domain I will direct it to my site. The temporary redirection to was to satisfy Complainant's request I remove the parking page so I redirected to an existing fan site.”
The October 30, 2008 email noted that the Complainant had apparently been comfortable with other individuals using “Lamborghini” domain names as fan sites.
The October 30, 2008 email explained that the Domain Name had been registered in the name of a privacy service, to cut down on the amount of junk mail and spam.
The Complainant says that it sent a warning letter to the Respondents on July 19, 2007, but did not receive a reply. The Complainant did not produce a copy of that letter, and it seems likely that the date is incorrect – the Domain Name was not registered until nearly two months after the date mentioned by the Complainant in its Complaint. As noted in section 3 of this decision, the author of the October 30, 2008 email produced a copy of a reply email sent to the Complainant's representative on August 13, 2008, inviting the Complainant's representative to contact the author's attorney. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
1. The Domain Name is confusingly similar to the Complainant's trademarks. The Domain Name combines two registered trademarks owned by the Complainant, and the “.com” suffix does not affect the comparison which is required to determine identity or similarity.
2. There is no evidence of the Respondents using the Domain Name for any bona fide offering of goods or services, or of the Respondents having made any bona fide preparations for any such offerings. An August 2008 printout of the Respondents' website refers to the Domain Name as having “just been registered”.
3. There is no possibility of the Respondents having rights in either of the marks LAMBORGHINI or REVENTON. The Complainant monitors trademark applications around the world, and would have known if the Respondents had made any application to register either of those marks. Nor has the Complainant granted any license to the Respondents to use its trademarks or name that would authorize the registration of the Domain Name.
4. The Respondents' passive holding of the Domain Name for more than 12 months, without any evidence of preparations to make a lawful use of the Domain Name, excludes the possibility of the Respondents having a legitimate interest in the Domain Name.
5. The Respondents are not commonly known by the Domain Name. There is no evidence that the Respondents have been making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain. The Respondents offer sponsored links, inter alia, to a direct competitor of the Complainant. Therefore, the Respondents provide a commercial service and earn benefits, and that rules out any possibility of use without intent for commercial gain. Also, previous decisions under the Policy have held that using a disputed domain name purely to point to a web page containing sponsored links to third party sites does not constitute a legitimate interest (citing L'Oréal Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc.,WIPO Case No. D2005-0623).
6. The Domain Name was registered and is being used in bad faith, having regard to the following:
(i) Passive holding of a disputed domain name may constitute bad faith registration and use in certain circumstances (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Circumstances which might lead to a conclusion of registration and bad faith use by passive holding, include where the Complainant's trademark has a strong reputation that is widely known, and where the Respondent has taken steps to conceal its true identity, or provided false contact details. All those requirements are fulfilled in this case. The true registrant was initially disguised by registering the Domain Name under the name “Oneandone”.
(ii) When registering the Domain Name, the Respondents had knowledge of the Complainant's trademarks and business names, due to their worldwide fame. The Respondents' knowledge is also to be inferred from the combination of the Complainant's trademarks in the Domain Name.
(iii) The Respondents' failure to respond to the warning letter of July 19, 2007, and its continued use of the sponsored link to the Complainant's main competitor, are further evidence of the Respondents' bad faith registration and use, and that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor.
(iv) By using the Domain Name, the Respondents have intentionally attempted to attract Internet users for commercial gain (Policy, paragraph 4(b)(iv)). The Domain Name is used to display commercial advertisements in the form of sponsored links, including one to a website featuring products of the Complainant's main competitor. This demonstrates that the Respondents aim to use the confusion of the Domain Name with the Complainant's marks, as a hook for customers who, on arriving at the Respondents' website, will be lured into clicking on one of the sponsored links and therefore generating revenue for the Respondents. The Respondents thus exploit the Complainant's trademarks for their own commercial gain.
(v) The Respondents had actual and constructive knowledge of the Complainant's trademarks when the Domain Name was acquired. The registration of a disputed domain name that is identical to a famous trademark, without authorization, is in itself evidence of bad faith.
7. Considering all of the circumstances (famous trademark, anonymized registrant, sponsored link to main competitor, no legitimate usage more than 12 months after registration, no response to warning letter, blocking the Complainant from registering its company name in combination with its top car as the domain name for a product-related website), the registration and use of the Domain Name in bad faith is evident. B. Respondents
The informal Response contained in the October 30, 2008 email, contains the following contentions:
1. The Complainant is apparently comfortable with fan sites that use the name “Lamborghini” as part of the Domain Name.
2. The Complainant's rights to the word “Reventon” are a matter of dispute. In the United States, another company registered the mark REVENTON on May 9, 2006 (Entravision Communications Corporation). The USPTO has not granted Lamborghini its requested trademark.
3. The Complainant's application to register the “Reventon” mark states a first use date of April 30, 2008. The Respondents' first use was in 2007, long before Complainant's use.
4. The Complainant does not have the right to every domain with the term “Lamborghini” in it. In fact, the Complainant has never sought use of any domains varying its model names, such as , , , and . Those domains all display Registrar “parking pages”, and are likely owned by third parties.
5. The domain name redirects to a fan site “”, which is a fair use.
6. There is no merit in the Complainant's claim that the use of the private registration service in registering the Domain Name, somehow evidences bad faith. The Complainant was able to contact the Respondents, and received a Response (referring to the August 13, 2008 email). There was no bad faith intent associated with the use of the private registration service.
7. There has been no bad faith intent to profit from a use of the Complainant's mark.
8. The Complainant has falsely stated that it did not receive any response to its approach to the registrant of the Domain Name.
9. The Complainant failed to mail to the Respondent a copy of the Complaint. All that was received was a two-page Amendment.
10. The Complainant's issue about the linkage on the Respondent's website to the website dealing with Ferrari cars, has been eliminated. Immediate action was taken to remove the automatically generated parking page from the Respondents' website, once the Complainant's concerns were known.
11. The Respondents have a legitimate intent to use the Domain Name for non-commercial, fair use purposes, and a site was developed within one month of registration of the Domain Name (not over 12 months, as the Complainant falsely accuses).
12. The Complainant has acted in bad faith, ignoring instructions to contact the Respondents' legal counsel prior to filing this proceeding, and in not giving the Respondents' counsel adequate opportunity to respond, while knowing of counsel's vacation schedule. The Complainant is making an attempt at reverse domain name hijacking. Everything possible has been done to satisfy the Complainant, but it is using its resources as a large corporation to take the Domain Name from the Respondents. 6. Discussion and Findings A. What the Complainant has to prove – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Procedural Issue - the Informal Response and the Named Respondents
As noted above, no formal Response was made by either named Respondent. Although a 7 day extension of time was granted for filing a Response, all that the Center received was an unsigned email, with no identification of the author, and without the certificate (required pursuant to paragraph 5(b)(viii) of the Rules) certifying that the information contained in the Response was, to the best of the Respondents' knowledge, complete and accurate, and that the assertions in the Response were warranted under the Rules and under applicable law (whether as it then existed or as it might be extended by good faith and reasonable argument).
The failure to file a proper Response is not sufficiently explained by counsel being out of the country on holiday. A 7 day extension for filing a response was granted, and the Panel has no doubt that there are many competent attorneys who could have advised the Respondents within the allowed timeframe.
Nevertheless, some substantive answer to the Complaint was received within the allowed Response time, and the Panel has a discretion to receive informal statements. In this particular case, the Panel proposes to consider the informal Response contained in the October 30, 2008 email, while taking due account of the deficiencies mentioned above in deciding what weight, if any, is to be attributed to the statements made in the document.
When it was advised by the Center of the registrant details provided to the Center by 1 & 1 Internet AG, the Complainant elected to add Ms. Calangian as an additional Respondent. The Panel accordingly uses the plural “Respondents” in this decision, although the true party in interest appears to be Ms. Calangian. Nothing appears to turn on the distinction, as an informal response has been received (presumably from the true party in interest), and any transfer decision the Panel might make will effectively operate in rem in respect of the Domain Name, irrespective of the identity of the true party in interest. C. Identical or Confusingly Similar
The Complainant has sufficiently proved this part of the Complaint. It has proved that it is the owner of the mark LAMBORGHINI in the United States of America, and that the name “Reventon” is the name by which one of its most exclusive products is known. In the circumstances of this case, it is not necessary for the Complainant to rely on any REVENTON trademark and no such proof of any such registration has been provided. In the Panel's view, the Domain Name is confusingly similar to the Complainant's LAMBORGHINI mark standing alone.
In Quintessentially UK v. Mark Schnorenberg v. Quintessentially Concierge,WIPO Case No. D2006-1643, this Panel said:
“Numerous WIPO Panels have found that a domain name that wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782, and the decisions referred to at pages 4-5 of the decision in that case. As noted by the three-member Panel in The Ritz Hotel v. Damir Kruzicevic,WIPO Case No. D2005-1137, there may be some cases where a domain name which incorporates in full another party's registered trademark will not be confusingly similar to that trademark because sufficient additional letters or numbers have been added to the registered mark to remove any confusion. But as in The Ritz Hotel case, that is not the position here, where the word “quintessentially” is the more distinctive part of the Domain Name, and the word “concierge” is generic or descriptive. As in The Ritz Hotel case, the addition of a generic expression which is descriptive of the business operated by the complainant (in this case “concierge”) serves only to increase the likelihood of confusion (see the Ritz Hotel case at page 9 of the decision, and the cases there referred to).”
As in the Quintessentially Concierge and The Ritz Hotel cases, so in this case the added word (“Reventon”) is descriptive of one of the Complainant's products. In those circumstances, forming the Domain Name by adding the word “Reventon” to the Complainant's LAMBORGHINI mark, served only to increase the likelihood of confusion.
The use of the hyphen in the Domain Name does not affect the confusing similarity between the Domain Name and the Complainant's LAMBORGHINI mark, and the “.com” suffix is not taken into account in the comparison which is required by paragraph 4(a) of the Policy.
For the foregoing reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant's LAMBORGHINI mark. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has shown that the Domain Name is confusingly similar to its LAMBORGHINI mark, and the Complainant has not authorized the Respondents to use that mark. There is no suggestion that the Respondents or either of them is commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy cannot apply. That combination of circumstances sufficiently establishes a prima facie case of “no right or legitimate interest”, so the evidentiary onus shifts to the Respondents.
The Respondents have failed to discharge that evidentiary burden. First, there is no evidence of the Respondents having used the Domain Name in connection with any bona fide offering of goods or services, or of the Respondents having made any demonstrable preparations to do so. The Panel does not regard the simple parking of the Domain Name with a parking service as such a bona fide use, particularly in the circumstances of this case where the Panel has come to the view that the Domain Name was registered and has been used in bad faith. There is a claim in the October 30, 2008 email that a website had been developed for the Domain Name within one month after the registration. If that were so, it would presumably have been a simple matter for the Respondents to have produced documents from September/October 2007, evidencing the work that is said to have been carried out at that time. No such documents have been produced, and the Panel infers that no such proof is available (the relevance of any such documents, if they exist, must have been obvious to the Respondents).
Nor can the Respondents bring themselves within paragraph 4(iii) of the Policy (legitimate non-commercial or fair use of a disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the complainant's mark). Paragraph 4(c)(iii) of the Policy requires that a Respondent be presently making the legitimate non-commercial or fair use. An intention to make such a use of the disputed domain name in the future is not sufficient. Nor, in the Panel's view, could the belated decision to take down the third party advertising links and point the Domain Name to some third party fan site, somehow render what had been a bad faith use “legitimate” or “fair”. The October 30, 2008, email openly acknowledged that the link to the third party fan site was no more than a temporary stratagem, and that the Respondents intend to proceed with the originally intended use if and when the Panel permits the Respondents to retain the Domain Name. If temporary strategies such as that were allowed to be effective, every cybersquatter could avoid the operation of the Policy by temporarily dismantling the website at the disputed domain name and pointing it to a “harmless”, non-commercial fan site or criticism site as soon as it knew that a complaint under the Policy had been made (or was about to be made).
Having regard to the foregoing matters, the Panel is of the view that that the Respondents have failed to make out a case for any right or legitimate interest in respect of the Domain Name. The Complainant therefore succeeds on this part of its Complaint. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Complainant has also made out its case on this part of the Complaint. The Panel has come to that view for the following reasons:
1. The Domain Name itself makes it clear that the Respondents were aware of the well-known LAMBORGHINI mark when the Domain Name was registered. Not only is the LAMBORGHINI mark world famous, but the “Reventon” was the complainant group's newest model at the time the Domain Name was registered in September 2007. It is not clear from the Complaint when the Reventon was first publicized, but the Panel notes that the Reventon appears to have been introduced to the world sports car market at the Frankfurt motor show of 2007. On the evidence produced, it seems more likely than not that the Reventon had not been the subject of major publicity for very long before the Domain Name was registered on September 13, 2007.
2. Until very recently, the Respondents have done nothing with the Domain Name, other than point it to a landing page website featuring sponsored links to third party websites, one of which features the products of one of the Complainant's major competitors, Ferrari. Numerous Panel decisions in cases under the Policy have regarded the existence of links from a website at a disputed domain name to a website featuring products of a complainant's competitors, as a compelling indicator of bad faith registration and use. That is the position here, where the Respondents have registered a domain name consisting of a world famous mark and the name of the latest product marketed by the trademark owner under that mark. On the face of it, this case looks like a typical instance of cybersquatting, where a respondent has registered someone else's mark as a domain name, with a view to selling the domain name to the owner of the mark and / or attracting increased Internet traffic to a website at the domain name, in either case with intent to make a commercial gain. The fact that the Domain Name has resolved to a website consisting solely of sponsored links (including at least one to a site featuring the Complainant's competitor's products) tends to reinforce the impression of cybersquatting.
3. The Respondents have claimed that they intended to make a non-commercial, fair use of the Domain Name, and that a website had been developed within one month of the Domain Name having been registered. But the Respondents have produced no evidence whatsoever of any such preparatory work having been undertaken to establish a genuine non-commercial website at the Domain Name. Surely there would have been some preparatory notes or drawings, or an invoice from a web design company or something similar, if any such work had been undertaken? It would have been a relatively simple matter for the Respondents to have produced evidence of any such preparatory work if it had been undertaken. They have not done so.
4. The informal email communications sent (apparently on the Respondents' behalf) on October 30 and November 17 2008, show that the author was not unintelligent, or badly versed in the Policy and the Rules. The Respondents' claimed procedural rights were asserted, competently and clearly. The impression the Panel has gained is that, whoever is behind the Respondents is not unsophisticated in the ways of the Internet and domain name registration. Against that background, the Respondents can be presumed to have understood the need for a clear, well-supported explanation for their choice of the Domain Name. The informal Response emails fall far short of that standard. First, they are unsigned, and the author is not identified. The Panel presumes that they were written by Ms. Calangian (or her representative), but there is nothing in the emails themselves which identifies her as the author. Secondly, the Respondents have elected to avoid filing a formal Response, which would have been signed and included the certificate as to accuracy which is required by paragraph 5(b)(viii) of the Rules.
5. The use of the privacy service when the Domain Name was registered, does nothing, in the present circumstances, to assist the Respondents on the bad faith issue. The Panel is aware that in some circumstances there can be legitimate reasons for a registrant to use a privacy service, but in the combination of circumstances presented by this case, the use of the privacy service tends to strengthen the Panel's overall impression of bad faith. Most Internet users are affected to some extent by junk mail or spam, but relatively few respond by registering their domain names in the names of privacy services. The strength of the Complainant's prima facie case in this proceeding was such that a more detailed explanation for the Respondents' use of the privacy service was called for. Does the true party in interest here operate a business, or conduct other activities, which are particularly sensitive to, or likely to attract, spam email traffic? The Panel has not been told.
6. Considering the circumstances described above together, the Panel rejects the Respondents' explanation that they intended to make some non-commercial or fair use of the Domain Name. The Respondents elected to register a Domain Name consisting of a famous trademark and a leading product marketed by the trademark owner under that mark, and they have had over 12 months to establish a fan site or other non-commercial, fair use website at the Domain Name. They have not done that, nor provided concrete evidence of an intention to do so. Instead, the Domain Name has been used for revenue-generating purposes, through the use of sponsored links to third party websites. The Respondents may claim that the links were put there by the Registrar, and that they have not themselves derived any commercial benefit from them. The Panel finds that difficult to believe in circumstances where the registrar has itself been providing the privacy shield service, and in so doing presumably undertook to act on instruction from Ms. Calangian. In any event the Respondents must be ultimately responsible for the use to which the Domain Name has been put (see in that regard the decision of this Panel in Grundfos AS v. Texas International Property Associates,WIPO Case No. D2000-1448).
Taking down the parking page when the Complainant complained, came too late for the Respondents to avoid a finding of bad faith registration and use. The Panel finds that there had already been bad faith registration and use by that stage, particularly in creating or allowing the link from the Respondents' website to the Ferrari website. To allow a respondent to avoid a transfer order by ceasing its bad faith activities on receipt of a complaint from the complainant, possibly only temporarily, would undermine the purpose and operation of the Policy.
For all of the foregoing reasons, the Panel finds that the Respondents registered and have used the Domain Name for one or other of the bad faith purposes described at paragraphs 4(b)(i) or 4(b)(iv) of the Policy.
The Complainant having made out its case on all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: December 5, 2008
Full & Egal Universal Law Academy