WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Automobili Lamborghini Holding S.p.A. v. Szemerszky Zsolt Case No. D2009-0774 1. The Parties
The Complainant is Automobili Lamborghini Holding S.p.A., Sant'Agata Bolognese, Italy, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Szemerszky Zsolt, Berlin, Germany. 2. The Domain Names and Registrar
The disputed domain names and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2009. On June 12, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On June 15, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2009.
The Center appointed Ian Blackshaw as the sole panelist in this matter on July 20, 2009. 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 Italian manufacturer of high performance sports cars based in Sant'Agata Bolognese, Italy and was founded in 1963 by Ferruccio Lamborghini as Automobili Ferruccio Lamborghini. The Complainant is now a wholly-owned subsidiary of the German car manufacturer Audi AG. The Complainant itself is the holding company of the Lamborghini Group. The Complainant's wholly-owned subsidiary Automobili Lamborghini S. p. A. manufactures the automobiles. The vehicles of the Complainant belong to the world's most famous luxury sports cars.
The Complainant's economic figures in 2007 were:
- Group revenue: 404 Million EUR
- Employees: 930
- Production: 2,500 cars
The Panel has been provided with an extract of the Annual Report of the Audi AG Ingolstadt, the holding company of the Complainant, confirming those figures.
The Complainant is also the proprietor of a large number of national and international LAMBORGHINI trademarks; the Complainant has registered, inter alia, the following trademarks:
Registr.
Type
No
Date
Classes
Countries
CTM
WM
001098383
03.08.1999
7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37, 41
EU
Madrid
WM
444261
15.03.1979
03, 09, 14, 16, 18, 25
AT, BNL, DE, (ES), FR, IT
Madrid
WM
460178
28.03.1981
03, 04, 09, 12, 14, 16, 18, 25, 28, 34
DE, AT, BNL, (ES), FR, EG, IT, MC, CH
Madrid
WM
836696
16.09.2004
36
IT, CH, CN, RU
Madrid
WFM
467055
19.02.1982
01, 02 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34
IT, AT, BX, BY, CH, CZ, DZ, EG, ES, FR, HR, HU, KP, KZ, LI, MA, MC, ME, PT, RO, RS, RU, SI, SK, SM, UA, VN
USPTO
WM
74019105
11/13/1990
IC 012.US 019
US
USPTO
WFM
73348788
08/11/1981
IC 028.US 022, 026, 050
US
USPTO
WM
73208281
09/21/1978
IC 014.US 002, 027, 028, 050
IC 016.US 023, 037
IC 018.US 003
IC 025.US 039
US
USPTO
WFM
77407165
09/03/2007
IC 028.US 022, 023, 038, 050
US
USPTO
WFM
77407493
09/03/2007
IC 012.US 019, 021, 023, 031, 035, 044
US
Italy
IPO
WM
326126
21.10.1980
03, 04, 09, 12, 14, 16, 18, 25, 28, 34
IT
WM = word mark; WFM = word/figurative mark
The distinctive element of all the trademarks listed above is the character string “Lamborghini”. LAMBORGHINI is a well-known trademark and of strong reputation (see Audi AG v. Hans Wolf,WIPO Case No. D2001-0148 ; Automobili Lamborghini Holding S.p.A. v. Andrew David Dawson,WIPO Case No. D2002-1003 ; Automobili Lamborghini Holding S.p.A. v. Primal Ventures Inc.,WIPO Case No. D2008-0548 ; Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc.,WIPO Case No. DTV2008-0010 ; Automobili Lamborghini Holding S.p.A. v. Jill Calangian,WIPO Case No. D2008-1443 ).
The excellent reputation of “Lamborghini” results from the masterpieces of famous sports cars that the Complainant has manufactured during the past 46 years. Despite, or actually because of, the fact that only a limited number of vehicles is produced each year, Lamborghini automobiles are linked with luxury, thrill and success. Each new model is eagerly anticipated by fans all over the world and enjoys broad coverage by the international press. In addition, the Complainant spends millions of Euros for global advertisement and promotion each year.
Millions of people worldwide saw the Complainant's cars in the movie: “Batman – The Dark Knight”. A dialogue between the figures Batman and Arthur, which is also part of the official trailer, closes with the line: “The Lamborghini then – much more subtle” making fun of the attention the Complainant's cars usually receive.1
Using the string “Lamborghini” with G results in approximately 41,600,000 hits. The first 50 hits mostly link to websites dealing with cars of the Complainant's group, be it in connection with the trading of cars or fan pages.
The Complainant's group promotes Lamborghini cars on the Internet at “” with an innovative interactive webpage, including e.g. detailed graphics, photos, footage and sound samples.
On October 25, 2008, Automobili Lamborghini announced the Lamborghini Blancpain Super Trofeo – the world's fastest one-make series. The races debuted in June 2009, featuring exclusively the Lamborghini's Super Trofeo, a lightweight version of the Gallardo LP 560-4 super sports car. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions: A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The disputed second level domains consist of the Complaint's famous trademark and the descriptive term “team” or “racingteam”. “Lamborghini” is inherently distinctive with substantial secondary meaning because of its international reputation.
Being a common English word “team” means a group of persons associated together with a shared objective.2 Internet users interpret the domain name as the name of a team from or concerning Lamborghini. Therefore, “Lamborghini” is used in the disputed domain names in a trademark sense.
Adding merely a descriptive term to a known trademark or name does not render it different or distinctive from that trademark or name (see Dr. Ing. h.c. F. Porsche AG v. Simon Harvey,WIPO Case No. D2002-0194 – et alt.) We also refer to the findings in Ferrari S.p.A. v. JK Marketing, WIPO Case No. D2001-1003:
“In comparison with Complainant's trademark, the disputed Domain Name bears the additional word ‘shop'. However, the word ‘shop' is a generic term and therefore not a distinctive element for a trademark. In addition, given the world-wide reputation of FERRARI as a high-class sports and racing car, the trademark component FERRARI clearly dominates the disputed Domain Name. Accordingly, Complainant has correctly stated that the disputed Domain Name is confusingly similar to its trademark FERRARI.”
Furthermore, “Lamborghini team” suggests that the domain name is used by a group of persons from Lamborghini, e.g. the service team, and thus creates the perception of a legal relationship between the Complainant and the Respondent. The same applies to the term “Lamborghini racing team” which suggests that the domain concerns the official racing team of the Complainant or at least an officially licensed racing team.
It is established that the specific top level of a domain name such as “.com”, “.org”, “.tv” or “.net” does not affect the domain name for the purpose of determining the identity or similarity of a domain name and a trademark (Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro,WIPO Case No. DTV2008-0001; Rodale Inc. v. Cass Foster, WIPO Case No. DBIZ2002-00148; Carlsberg A/S v. Brand Live Television, WIPO Case No. DTV2008-0003).
Therefore, the disputed domain names are, at least, confusingly similar to the trademark of the Complainant. A2. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
It is the consensus view of the hitherto existing panel decisions that the Complainant is only required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name (see Europay International S. A. v. E,WIPO Case No. D2000-0173). The panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, summarized the burden of proof in respect of paragraph 4(a) (ii) of the Policy, namely, that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent.
1) No use 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 (Para. 4(c)(i) UDRP)
The Respondent is a professional motor car racing driver and founder of the Green Hope Racing Team.
On his Internet website the Respondent states to have driving experience with Lotus (best), Ferrari, Lamborghini, Suzuki, Fiat. In 2008, the Respondent was second in the last race of the Lotus Cup Europe.
The Respondent contacted the Complainant in March 2009 stating that he was interested in participating in the Lamborghini Blancpain Super Trofeo 2009. For this purpose, he ordered three Lamborghini Gallardo Super Trofeo racing vehicles, the corresponding entry fees and spare parts in the total amount of more than 730,000 Euro (excl VAT).
After signing the Purchase and Sale Agreements for the three vehicles, the Respondent informed the Complainant that he would not be able to pay for the cars and, therefore, would not participate in the Lamborghini Gallardo Super Trofeo.
According to the Whois data, the Respondent registered in December 2008 the disputed domain names. The website linked to the disputed domain names displays information and media content related to Lamborghini, the Lamborghini Gallardo Super Trofeo and to the Respondent and his Green Hope Racing Team.
Both disputed domain names resolve to the same website. The website contains a “racing store” which is under construction. Additionally, the website features a page concerning “sponsorship”, where sponsors looking for a racing team participating in the Lamborghini Blancpain Super Trofeo are directed to the Respondent. On the page it reads:
“Lamborghini Blancpain Super Trofeo sponsorship
For potential partners there is a possibility to make partnership or to sponsor the Super Trofeo race teams, pilots or the whole Super Trofeo race series.
If you are interested in it, please do not hesitate to get in touch with us!
You have two possibilities:
If you want to be a main sponsor of the Lamborghini Blancpain Super Trofeo series get in touch with these contacts:
Tel: +44 (0)1908 635300 or sponsor.supertrofeo@
If you want to be a sponsor or a partner for one of the race teams or pilots, please contact us driectly at: info@
Further questions:
If you have further questions, please do not hesitate to contact us driectly at: info@”
Thereby, the Respondent diverts sponsoring partners to the Green Hope Racing Team by pretending to be a direct contact for Lamborghini teams.
Furthermore, the Respondent offers on the website linked to the disputed domain names different sponsoring packages. “The Gold package” for 2,000 Euros, for example, includes media appearances like the displaying of the sponsor's logo on the racing car and the drivers suit. All sponsoring packages include the displaying of the sponsor`s logo at the website under . The sponsoring packages could be ordered and paid for directly on the webpage through a “buy now” button.
Therefore, the Respondent exploits the disputed domain names commercially by promoting his racing team and by selling advertisements on the website. Especially in view of the fact that the Respondent neither drives a Lamborghini professionally nor participates in an official Lamborghini Team, such usage of the domain names could not be considered legitimate.
The Respondent also knows of his lack of rights to use the Complainant's trademarks in a domain name. While negotiating the purchase agreement for the three Lamborghini Gallardo Super Trofeo racing cars, the Respondent asked the Complainant whether the Complainant will license the use of its trademarks for the Respondent's purposes. The Complainant informed the Respondent that guidelines covering this topic will be provided to the participants of the Lamborghini Blancpain Super Trofeo and that any usage of Complainant's trademarks requires prior written approval from the Complainant.
Further circumstances indicate the absence of the Respondent's legitimate interests in the disputed domain names. The Complainant sent on April 29, 2009 a warning letter to the Respondent concerning the domain name .
In his reply the Respondent offered to transfer the disputed domain names if the Complainant rendered the purchase agreement for the cars null and void and paid “compensation” in the amount of 75,000 Euro (version 1) or alternatively paid 785,000 Euro whereby the Respondent than supposedly would pay the ordered Lamborghini race cars (version 2).
According to further decisions of the panels before WIPO, the offering of domain names for sale for a sum greater than out of pocket costs suggests a lack of legitimate interest in the domain name (see Süd-Chemie AG v. S,WIPO Case No. D2002-0970 ).
The Panel has been provided with evidence of all the above statements and assertions by the Complainant.
2) Respondent is not commonly known by “Lamborghini” (Para. 4(c)(ii) UDRP)
The Respondent in this proceeding is neither commonly known as “Lamborghini”, “Lamborghini Team” nor “Lamborghini Racing Team”. There are no rights of the Respondent in a trademark “Lamborghini” cognizable. The Complainant is monitoring all applications for trademarks comprising the string “Lamborghini” globally and would be aware if there were any relevant trademarks of the Respondent. The Respondent is not a licensee of the Complainant and no consent has been granted by Complainant to Respondent to use or exploit its trademarks “Lamborghini”. To the contrary, the Complainant informed the Respondent that any use of its trademark would depend on prior written consent.
According to further decisions, the lack of license or permission of the Respondent by the Complainant to use the marks or any domain name incorporating such marks provides proof of no legitimate interests (see Philip Morris Incorporated v. ,WIPO Case No. D2003-0004).
In fact, the Respondent is owner of the Green Hope Racing Team, which is affiliated to direct competitors of the Complainant, like Lotus, Ferrari, Suzuki and Fiat. In particular, the Respondent participated in the Lotus Cup Europe 2008 which commercially competes with the Complainant's Lamborghini Blancpain Super Trofeo. Evidence of which has again been provided to the Panel.
A financially unsustainable intention to participate in the Lamborghini Blancpain Super Trofeo does not give any right to the Respondent to use the mark of the Complainant as a trade name to carry on its business in order to make commercial gain and to attract consumers (see Dr. Ing h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312).
3) No non-commercial or fair use of the Respondent (Para. 4(c)(iii) UDRP)
The Respondent does not show any preparations for a non-commercial or fair use of the disputed domain names. He does not offer any goods or free services. As detailed above, the user finds at the disputed domain names advertisements for sponsorship packages. Thereby, the Respondent tries to achieve earnings. Therefore, the Respondent provides a commercial service that eliminates a usage without intent for commercial gain. A3. The domain name was registered and is being used in bad faith;
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))
1) Circumstances indicate that the Respondent registered the domain primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of a trademark, for valuable consideration in excess of out-of-pocket costs directly related to the domain name (Para. 4(b) (i) UDRP)
The Respondent demanded in exchange for the domain names to be paid the sum of 785,000 Euro or 75,000 Euro and to be released from its contractual obligations which would consist primarily in damages due to late payment.
This demand clearly and by far exceeds the Respondent's reasonable out-of-pocket costs for registration. Panels have found bad faith in registrants asking for 900 $ for the transfer of a domain name (see Prudential Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, Nat. Arb. Forum FA 105218, April 8, 2002). It is irrelevant if the Complainant showed interest in acquiring the disputed domain names from the Respondent before the Respondent made his counter-offer (Intuit, Inc. v. Rocco Mancini, ,WIPO Case No. DBIZ2002-00216).
2) Respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and shows a pattern of such conduct (Para. 4(b)(ii) UDRP)
The Respondent registered two domain names that combine the Complainant's name with descriptive terms for racing teams and thereby prevented the Complainant from using these domain names for official Lamborghini Teams.
A pattern of such conduct could be inferred from the number of two domain names in dispute regarding that both domain names have a similar meaning and, therefore, prevent the Complainant from using the most intuitive domain names for its own business, which is described by the domain names (see The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale,WIPO Case No. D2000-0378 - , : two domain names; and Reuters Ltd. v. Teletrust IPR Ltd,WIPO Case No. D2000-0471 , , , , , : six domain names).
3) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor (Para. 4(b)(iii) UDRP)
The use of the disputed domain names is aimed to interfere with Complainant's endeavors to acquire sponsors for its Lamborghini Blancpain Super Trofeo or officially licensed participants. The Respondent and his Green Hope Racing Team participate in races of direct competitors of the Complainant.
4) By using the domain names Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site (Para 4(b)(iv) UDRP)
A considerable part of Internet users apparently and reasonably expect to find under “Lamborghiniteam” or “Lamborghiniracingteam” the team of the Complainant or at least an officially licensed Lamborghini Team. Thus, the disputed domain names render the impression that its owner is the Complainant or at least related to the Complainant. The combination of a trademark with the term “team” is generally used to designate an at least licensed group of persons affiliated with the owner of the mark.
The disputed domain names are used for acquiring sponsors. Thus, the Respondent intentionally draws profit from the Complainant's famous trademark by exploiting the attention of users which are looking for the Complainant or its teams.
There is no justifying relationship between the parties: the Respondent is not a licensee of the Complainant and no permission or consent has been granted to the Respondent to use the “Lamborghini” trademark or to apply for any domain name incorporating this mark (see Deutsche Bank AG v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277; Parfums Christian Dior v. QTR Corporation,WIPO Case No. D2000-0023).
5) Circumstances being evidence of the registration and use of the domain in bad faith (Para. 4(b) UDRP)
The list of examples of indications for a registration in bad faith contained in Para 4(b)(iii) UDRP is non-exhaustive (see TV Globo Ltda. v. Radio MorenaWIPO Case No. D2000–0245 ; Süd-Chemie AG v. S,WIPO Case No. D2002-0970 ).
Where the Respondent “knew or should have known” of the registration and use of the trademarks of the Complainant prior to the registration of the domain name, bad faith should be ascertained (see Federated Western Properties, Inc. v. Faton Brezica,WIPO Case No. D2002-0083 ; Ferrari S.p.A v. Allen Ginsberg,WIPO Case No. D2002-0033 ). The Respondent created the disputed domain names surely knowing of the Complainant's trademark, due to its strong reputation and the fact that the Respondent allegedly intended to take part in the Lamborghini Blancpain Super Trofeo.
“Lamborghini” has been constantly and highly promoted for decades and is, therefore, known to the Respondent, both in fact and as a matter of law (see Finter Bank Zürich v. Gianluca OlivieriWIPO Case No. D2000-0091). Thus, the Respondent had actual and constructive knowledge of the trademarks of the Complainant when he acquired the disputed domains. The registration of a domain name that is identical to a famous trademark without authorization is in itself evidence of bad faith (see PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561; Société des Hôtels Méridien v. ABC-Consulting,WIPO Case No. D2004-0792 ).
Considering all the circumstances (claiming for much more than the out of pocket costs, well known and famous trademark, no legitimate usage, blocking the Complainant from using the domain names for official Lamborghini teams), the registration and use of the disputed domain names in bad faith appear evident. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant's favor solely based on the Respondent's default. See Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain names incorporate the Complainant's well-known trademark LAMBORGHINI, which is also the Complainant's corporate business name; and is also the subject of a domain name owned by the Complainant, as specified above, through which the Complainant promotes its products on the Internet.
The addition of the words “racingteam” and “team” to the disputed domain names does not distinguish the domain names from the trademark, as such words are merely descriptive and not distinctive. See Ferrari S.p.A. v. JK Marketing, WIPO Case No. D2001-1003; and Dr. Ing. h.c. F. Porsche AG v. Simon Harvey,WIPO Case No. D2002-0194. See also The Sporting Exchange Limited v. Josh Adams,WIPO Case No. D2008-0343 and the other UDRP cases cited therein.
Likewise, the addition of the suffix “.com” to the disputed domain names does not affect the legal position for purposes of the first element, as its presence in the disputed domain names is for Internet registration purposes only. See Samsung Electronics Col. Ltd. v. Selim Civelek,WIPO Case No. DRO2008-0005 and the other UDRP cases cited therein.
In view of all this, the Panel finds that the disputed domain names registered by the Respondent if not identical are confusingly similar to the Complainant's well-known trademark LAMBORGHINI, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and substantial goodwill through wide commercial promotion and use of the same prior to the registration of the disputed domain names by the Respondent. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain names (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain names. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977. Furthermore, as mentioned above by the Complainant, the Respondent enquired about taking a license of the LAMBORGHINI trademark and the Panel agrees with the Complainant's contention that this shows that the Respondent recognized that he did not have any rights to use the trademark and his enquiry corroborates this situation.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's well-known trademark LAMBORGHINI. Indeed, the adoption by the Respondent of a domain names confusingly similar to the Complainant's well-known trademark LAMBORGHINI inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below) and the consequential tarnishing of the Complainant's well-known trademark LAMBORGHINI and also the valuable goodwill that the Complainant has established in this trademark through its promotion and commercial use of the same, sufficient evidence of which has been provided to the Panel, including the fact that the Respondent promotes on his web site competitive products and teams/tournaments, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which may constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site 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] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain names, is trading on the Complainant's valuable goodwill established in its well-known and widely-used trademark LAMBORGHINI for the Respondent's own benefit and gain.
Again, by registering and using the disputed domain names, incorporating without any modification the Complainant's well-known trademark LAMBORGHINI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Also, the fact that the disputed domain names include the well-known trademark LAMBORGHINI of the Complainant, held and widely promoted and commercially used by the Complainant prior to the date the Respondent registered the disputed domain names, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name would typically be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
Furthermore, the Panel also agrees with the Complainant's contentions that the Respondent's registration and use of the disputed domain names also constitute infringements of Paragraphs 4(b)(i), (ii) and (iii) of the Policy in the particular circumstances and for the reasons mentioned by the Complainant in section A3. 1.), 2.) and 3.) above.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular circumstances into account and for the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith. 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 names and be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: July 25, 2009
Full & Egal Universal Law Academy