The Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America (“U.S.”), represented by Phillips Ryther & Winchester, U.S.
The Respondent is Michael Oates, Captex Commercial Properties of Austin, Texas, U.S., self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. The Response was filed with the Center on May 15, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on May 24, 2017. 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, incorporated in New Jersey, is a subsidiary of Volkswagen AG, a German corporation. The Complainant is the exclusive importer in the U.S of Lamborghini automobiles, and is licensed by Automobili Lamborghini S.p.A. (“Lamborghini”), an Italian corporation founded in 1963, to use and enforce Lamborghini’s trademarks in the U.S.
The first U.S. registration for the LAMBORGHINI mark was obtained by Lamborghini in 1979, and since then a considerable number of additional U.S. registrations for LAMBORGHINI and LAMBORGHINI-formative marks have been issued. Lamborghini also has obtained numerous European Union trademark registrations for LAMBORGHINI and LAMBORGHINI-formative marks, as well as International registrations through the Madrid System. Consequently, a number of UDRP panels have concluded that the LAMBORGHINI marks have become well-known worldwide. See, e.g., Automobili Lamborghini Holding S.p.A. v. George Salazar / Jorge Salazar,WIPO Case No. D2010-0708.
Lamborghini automobiles are sold through a network of licensed dealerships. Lamborghini dealerships are authorized to register and maintain domain names comprised of a naming convention combining the LAMBORGHINI mark with the geographic location of the dealer – e.g.,. This convention is an established one among automobile manufacturers generally and among Lamborghini dealers in particular. See, e.g., Automobili Lamborghini Holding S.p.A. v. George Salazar / Jorge Salazar, supra. See also Volkswagen Group of America, Inc. v. Asmik,WIPO Case No. D2014-0616 (); Volkswagen AG v. MapleOne Solutions,WIPO Case No. D2003-0326 ().
The Respondent is a partner in Captex Commercial Properties (“Captex”), a commercial real estate firm located in Austin, Texas. The disputed domain name was registered by the Respondent on August 12, 2014, according to WhoIs records maintained by the Registrar. In 2016, a new franchisee was authorized to open a Lamborghini dealership in Austin, Texas, to be named “Lamborghini Austin” in keeping with Lamborghini’s established naming convention for its authorized dealers.
It was not until February 8, 2017, that the Complainant discovered that the disputed domain name had already been registered by the Respondent. On the following day, the Complainant’s legal counsel forwarded a letter to the Respondent by email. After receiving no reply, the Complainant’s counsel on April 12, 2017, sent a follow up email to the Respondent, and also left a voicemail message for the Respondent.
The Respondent replied on April 12, 2017, explaining that his intention in registering the disputed domain name was to start a super car photo blog of local Lamborghinis. The Respondent expressed a willingness to discuss transferring the disputed domain name, asking what the Complainant had in mind. The Complainant’s legal counsel indicated his client likely would agree to reimburse the Respondent for his documented, out-of-pocket registration costs for the disputed domain name, which the Complainant’s counsel estimated would be around USD150.
On April 18, 2017, the Respondent by email rejected the Complainant’s proposal and stated he was interested in a “carried interest arrangement”. The Complainant’s counsel requested an explanation of this term. On April 19, 2017, the Respondent replied by email, stating: (1) He would like Captex Properties to represent Lamborghini or its franchisee in purchasing or leasing the property for “Lamborghini of Austin”; (2) he would like to be provided with a full time, salaried position at “Lamborghini of Austin”. The Respondent remarked that in his opinion the disputed domain name was as valuable as the physical dealership itself.
According to the evidence submitted by the Complainant, the disputed domain name resolved to a “website coming soon” parked page at the time of filing the Complaint. The disputed domain name currently redirects to an Instagram page hosting pictures of the Complainant’s automobiles. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the LAMBORGHINI marks, used continuously in commerce for over fifty years. The Complainant maintains that due to longstanding advertising, promotion, and sale of goods and services the LAMBORGHINI marks have become well known and famous. The Complainant observes that the disputed domain name incorporates the famous LAMBORGHINI mark, adding only the geographic qualifier “Austin”. The Complainant submits that the addition of a geographic suffix does not alter the underlying mark to which it is added, and asserts that the disputed domain name thus is functionally identical to the LAMBORGHINI mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been authorized to use the disputed domain name, is not commonly known by the disputed domain name, and has not used or made demonstrable preparations to use the dispute domain name in connection with a bona fide offering of goods or services. The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent’s claim to have registered the disputed domain name “to start a super car photo blog of local Lamborghinis” is clearly pretextual. According to the Complainant, the Respondent registered the disputed domain name to create leverage to have his company Captex engaged to broker a land deal and to obtain a full time salaried position for himself with the incoming Lamborghini Austin dealership.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, given the strength and fame of the LAMBORGHINI marks, the Respondent’s bad faith is established by the registration without more. The Complainant further argues that the Respondent clearly was aware of the famous LAMBORGHINI marks when registering the disputed domain name, as is confirmed by the Respondent’s subsequent observation that the disputed domain name (URL) was as valuable as the physical Lamborghini dealership itself. The Complainant also submits that it is no coincidence that the Respondent chose to register a domain name that precisely followed the well-established naming convention used by authorized Lamborghini dealers.
The Complainant reiterates that the Respondent’s claim be making a legitimate noncommercial or fair use of the disputed domain name is pretextual. The Complainant submits that the Respondent’s registration of a domain name incorporating the famous LAMBORGHINI mark, of which the Respondent was clearly aware, and without any evident right to do so, establishes the Respondent’s bad faith, as does the Respondent’s attempt to create leverage for his company Captex being engaged to broker a land deal and to obtain for himself a full time salaried position with the incoming Lamborghini Austin dealership.
The Complainant observes that the Respondent is charged with constructive knowledge of the LAMBORGHINI marks by virtue of their registration with the United States Patent and Trademark Office (USPTO), and that actual or constructive knowledge of the Complainant’s rights supports a finding of bad faith. The Complainant further submits that bad faith may be presumed when, as here, the LAMBORGHINI mark is sufficiently well known and famous that “it is not possible to conceive of any plausible, actual or contemplative active use of the domain name” by the registrant “that would not be illegitimate, such as by being a passing-off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trade mark law” (quoting Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). B. Respondent
The Respondent describes himself as a lifelong resident of Austin, Texas, and a hobbyist photographer with multiple photo blogs. According to the Respondent, the subjects of his photography blogs include architecture, airplanes, art, drones, landscapes, motorsports and super cars.
The Respondent states that he registered the disputed domain name on August 12, 2014 with the intention of starting a super car photo blog, and that the first photo blog post was on September 28, 2014. According to the Respondent, he originally considered registering (“Lamborghinis in Austin”), but found the characters “sin” between “lamborghini” and “austin” too cumbersome and difficult for users.
The Respondent provides a screen shot of the posting of a photograph of a Lamborghini automobile with a time stamp of September 28, 2014. The Respondent also provides a screenshot of the “www.” website, containing photographs of Lamborghini automobiles. The Respondent concludes by requesting that he be permitted to retain control of the disputed domain name so that the operation of the photo blog can proceed unhindered. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the LAMBORGHINI mark, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the LAMBORGHINI mark is clearly recognizable in the disputed domain name. The inclusion of the geographic indicator “austin” does not serve to dispel the confusing similarity of the disputed domain name to the LAMBORGHINI mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the LAMBORGHINI mark. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the LAMBORGHINI mark, and which adopts a naming convention used by authorized Lamborghini dealers. Upon being contacted by the Complainant seeking transfer of the disputed domain name for the incoming Lamborghini Austin dealership, the Respondent sought to have his company Captex engaged to broker the purchase or lease of the Lamborghini Austin dealership’s new facility, and for himself to be provided a full time salaried position with the Lamborghini Austin dealership.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use 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) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
The Respondent claims that he registered the disputed domain name intending to start a “super car photo blog of local Lamborghinis”. Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark”.
An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the domain name, as well as circumstances beyond the domain name itself, and issues of commercial activity. The correlation between a disputed domain name and the complainant’s mark often is a central inquiry; the respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. As a general matter, UDRP panels have recognized that domain names comprised of certain geographic terms, such as or , tend to suggest sponsorship or endorsement by the trademark owner. Id. Further, the domain name must not be used as a pretext for commercial gain or other purposes inuring to the respondent’s benefit. See WIPO Jurisprudential Overview 3.0, paragraph 2.5, and cases cited therein.
After careful review of the attendant facts and circumstances, the Panel concludes that the Respondent has not demonstrated that he is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. The Respondent plainly was aware of the Complainant’s rights in the LAMBORGHINI mark when registering the disputed domain name, and the Respondent has not denied such knowledge. The Respondent registered a domain name that is comprised of the uniform naming convention used by authorized Lamborghini dealers – namely, “Lamborghini” combined with the geographic suffix “Austin”. As discussed earlier, this naming convention functions as the Lamborghini dealer’s trade name, and is registered by the dealer for use as a domain name, e.g., .
The Respondent has not denied being aware of this naming convention when registering the disputed domain name. Nor in the Panel’s opinion could the Respondent now credibly deny such knowledge, particularly given the Respondent’s statement to the Complainant’s counsel that the disputed domain name was as valuable as the physical dealership itself. Given the Respondent’s registration of a domain name adopting the naming convention used by authorized Lamborghini dealers, Internet visitors to the Respondent’s website could be confused whether the website they have arrived at is affiliated with, sponsored or endorsed by the Complainant.
The Panel finds that the Respondent’s claim to have registered the disputed domain name for use with a “super car photo blog of local Lamborghinis” is pretextual. The Respondent posted on Instagram a picture of a Lamborghini with a purported date stamp of September 28, 2014, but there is no evidence that the vehicle in the photograph is a “local Lamborghini” – that is, an Austin Lamborghini. The vehicle in the photograph displays an Arizona license plate rather than a Texas license plate, and it cannot be determined from the photograph if the picture was even taken in Austin. However, based on photographs posted by the Respondent on his website, it appears the photograph of this Lamborghini was taken, along with a number of other photographs, at the Texas World Speedway in College Station, Texas, some 100 miles from Austin, Texas. The Respondent reposted other Lamborghini photographs, including a number from outside of the U.S. Texas license plates can be seen clearly for only two of the Lamborghinis in the photographs posted by the Respondent, and neither of these photographs appear to have been taken in Austin. Only two photographs appear to have been taken in Austin, and these photographs are date stamped April 21, 2017.
Moreover, according to the evidence provided by the Complainant, at the time of the Complaint submission the disputed domain name displayed a parking page indicating “website coming soon”. The Panel finds that the Respondent’s subsequent linking of the disputed domain name to a third-party site hosting pictures of the Complainant’s cars is likely a mere pretext offered as a justification after the fact.
There is no evidence in the record that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and the Respondent has not claimed differently. Similarly, there is no evidence that the Respondent has been commonly known by the disputed domain name, nor has the Respondent contended otherwise. In short, the Respondent has not brought forward credible evidence to support a claim of rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iv) of the Policy. It is abundantly clear from the record that the Respondent was aware of the LAMBORGHINI mark and the naming convention used by authorized Lamborghini dealers when registering the disputed domain name. The Respondent engaged in opportunistic domain name speculation, and by his actions has clearly demonstrated that his primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, for commercial gain.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: June 8, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.7.
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