The Complainant is Tonino Lamborghini s.p.a. of Modena, Italy, represented by Studio Legale Corona-Catelli, Italy.
The Respondent is Samvel R Yusufiants of Moscow, Russian Federation, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 and stating that the language of the registration agreement for the disputed domain name is in Russian.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Russian is the language of the registration agreement, on June 16, 2017, the Center requested the Parties to submit their comments on the language of the proceeding. On June 19, 2017, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent submitted his request in Russian that Russian be the language of the proceeding.
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 in both English and Russian the Respondent of the Complaint, and the proceedings commenced on June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. The Response in Russian was filed with the Center on July 7, 2017.
The Center appointed Ladislav Jakl as the sole panelist in this matter on July 25, 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 Tonino Lamborghini s.p.a. owns several trademarks, registered since the 1980s containing the words “Tonino Lamborghini” (Annex 4 to the Complaint) including the trademark TONINO LAMBORGHINI in the United States of America registration no. 2203396, registered on November 17, 1998. These trademarks cover all kinds of products, including cellular phones (Nice class 9). The Complainant also owns rights on the domain name (WhoIs record under Annex 5 and 6 to the Complaint). The Complainant is also the owner of the domain name (Annex 8 to the Complaint). The “www.” website was created in 2009 and is dedicated to mobile phones branded “Tonino Lamborghini” (Annex 9 to the Complaint).
The disputed domain name was registered on January 22, 2015. The disputed domain name resolves to a website that copies the website of the Complainant selling Lamborghini mobiles. 5. Parties’ Contentions A. Complainant
The Complainant contends; that the disputed domain name is identical or confusingly similar to its trademarks TONINO LAMBORGHINI; that the Respondent has no rights or legitimate interests in respect to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1)). The disputed domain name incorporates the Complainant’s trademarks TONINO LAMBORGHINI in its entirety and that the addition of a generic term “store” is merely descriptive of the “online store”, which is the service offered on “www.”. Moreover, the disputed domain name is confusingly similar with Mr. Lamborghini’s surname.
As to rights or legitimate interests, in respect of the disputed domain name, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii); Rules, paragraph (b)(ix)(2)). The Complainant’s trademarks were registered long before registration of the disputed domain name (Annex 4 to the Complaint).
Furthermore, the Complainant argues that the disputed domain name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)). The Complainant claims that as at the time of its registration the Respondent knew or should have known of the registration and use of the Complainant’s trademarks prior to the Respondent registering the disputed domain name and that the registration of a trademark as a domain name is a clear indication of bad faith itself, even without considering other elements.
Moreover, the Respondent’s website “www.” (Annex 11 of the Complaint) is an exact copy of one of the Complainant’s websites (“www.” (Annex 12 of the Complaint)), which is further evidence of Respondent’s bad faith and malicious intent. The Complainant further contends that the disputed domain name is almost identical to the domain name (which belongs to Automobili Lamborghini s.p.a., (Annex 14 of the Complaint), which is the company founded by Mr. Tonino Lamborghini’s father, that commercializes the notorious cars, and with which the Complainants have a coexistence agreement on the word “Lamborghini”. The Respondent is clearly in bad faith, as he is exploiting Automobili Lamborghini’s notoriety as well.
Accordingly, the Complainant concludes that the Respondent’s registration and use of the disputed domain name was, and continues to be, in bad faith.
In accordance with paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name be transferred to the Complainant. B. Respondent
As to the question of whether the disputed domain name is identical or confusingly similar to TONINO LAMBORGHINI trademark in which the Complainant has rights, the Respondent in essence contends that disputed domain name, is not confusingly similar to the Complainant’s trademark.
As to the question of whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Respondent claims to be the founder of LuxTrade Ltd. which operates in the sale of luxury goods through online stores, and he claims that he is an official dealer of the Complainant through an authorization letter from the Complainant’s licensee (DBI Innovations Ltd.) (Annex 2 and 3 of the Response).
As to the question of whether the disputed domain name has been registered and used in bad faith, the Respondent claims that the disputed domain name was registered as part of the dealership agreement (Annex 2 of the Response). 6. Discussion and Findings A. Language of Proceedings
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. Paragraph 11(a) of the UDRP provides, that in absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel (once appointed) to determine otherwise. On June 19, 2017, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Complainant has submitted Annexes 2 and 3 of the Complaint which show that the Respondent not only shared correspondence with the Complainant in English, but is also using English on the website, thus providing evidence the Respondent has sufficient knowledge of the English language. The Respondent submitted his request in Russian that Russian be the language of the proceeding, and submitted his Response in Russian. The Panel, taking in to account all circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein, decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov,WIPO Case No. D2011-1636; Groupe Auchan v. xmxzl,WIPO Case No. DC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. B. Identical or Confusingly Similar
The Panel finds that that the disputed domain name is confusingly similar to the trademark TONINO LAMBORGHINI registered by the Complainant as trademarks in numerous countries all over the world. (Annex 4 to the Complaint). In the cases where at least a dominant feature of the relevant mark is recognizable in a domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP. See Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Mere addition of hyphens and of descriptive terms such as “store” are not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name. Mere addition of a descriptive term does not adequately distinguish a domain name from the mark pursuant to the Policy, paragraph 4(a)(i). UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the trademark (Wall -Mart Stores, Inc. v. Gerry Sinker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717; Sanofi-Aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778). As well the inclusion of the generic Top-Level Domain suffix “.com” does not avoid confusing similarity of the domain name and the trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. C. Rights or Legitimate Interests; and Bad faith registration and use
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which in particular but without limitation, are to be construed as evidence of both registration and use in bad faith. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has 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) 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 its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel has reviewed the evidence submitted by both Parties. The Panel notes that this dispute seems to be part of a contractual and trademark dispute that is outside the scope of the Policy. In this case it is not clear whether or not the Respondent was an authorized agent of the Complainant or of a licensee of the Complainant when it registered the disputed domain name in 2015. The Respondent has submitted several contract and authorization letters which do not clarify this. It is beyond the scope of the Policy to interpret agreements between the Parties or to determine whether they have breached the Complainant’s trademark. (See Section 4.14.6 of the WIPO Overview 3.0; and WIPO UDRP decisions TEFAL v. BombayBiz India Private Limited,WIPO Case No. D2015-0527; Philippe Dagenais designer inc. / Philippe Dagenais v. Groupe Dagenais MDC inc. (formerly Philippe Dagenais Mobilier Décoration Conseils Inc.) / Mobilier Philippe Dagenais, WIPOCase No. D2012-0336; Run-Time Consulting Inc. v. BetterMarketing Inc. o/a Agito Internet Marketing,WIPO Case No. D2008-1062). 7. Decision
For those reasons, the Panel will not make a finding under the second and third elements of the Policy, and therefore dismisses the Complaint.
Ladislav Jakl
Sole Panelist
Date: September 12, 2017
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