The Complainant is Automobili Lamborghini S.p.A., Italy, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Ali Asgahr, Rent Lamborghini Dubai, Pakistan. 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 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant; however, the full contact details were not provided. The Center requested from the Registrar the full contact details for the registrant on April 29, 2019. On the same day, the Registrar shared the full contact details for the registrant confirming with the one on the Complaint.
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 May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on May 29, 2019. 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 Automobili Lamborghini S.p.A., an Italian manufacturer of luxury sports cars, founded in 1963.
The Complainant owns several trademark registrations in multiple jurisdictions for the trademark LAMBORGHINI, which has been registered since 1981, including the following:
- European Union trademark LAMBORGHINI, No. 001098383, registered on June 21, 2000, in classes 7, 9, 12, 14, 16, 16, 18, 25, 27, 28, 36, 37 and 41; International trademark LAMBORGHINI, No. 460178, registered on March 28, 1981, in classes 3, 4, 9, 12, 14, 16, 18, 25, 28 and 34, claiming priority based on the Italian mark filed on October 21, 1980, No. 3525 C/80; United Arab Emirates trademark AUTOMOBILI LAMBORGHINI & Bull in Shield Device, Nos. 147497, 147525 and 147505, registered on June 14, 2011, in classes 9, 25 and 28, respectively; Pakistan trademark LAMBORGHINI, No. 247259, registered on March 1, 2008.
The Complainant’s LAMBORGHINI trademark was considered well-known in the following UDRP cases; Automobili Lamborghini Holding S.p.A. v. Guri Design, ,WIPO Case No. DAE2017-0003 (); Automobili Lamborghini Holding S.p.A. v. Primal Ventures Inc.,WIPO Case No. D2008-0548 (); Automobili Lamborghini Holding S.p.A. v. Unit 4 Humanity, Inc.,WIPO Case No. DTV2008-0010 (); Automobili Lamborghini Holding S.p.A v. OneandOne Private Registration, and Jill Calangian,WIPO Case No. D2008-1443 (), and Automobili Lamborghini Holding S.p.A. v. Andrew David Dawson,WIPO Case No. D2002-1003 ().
The disputed domain name was registered on February 19, 2019 and currently resolves to a page with the message “Future home of something quite cool”. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name entirely reproduces the Complainant’s mark LAMBORGHINI, with the addition of the non-distinctive word “rental” and the geographical identifier “Dubai”. Therefore, the disputed domain name should be considered as confusingly similar to the Complainant’s prior marks.
The Complainant alleges that its trademark LAMBORGHINI is well-known and that the disputed domain name would lead the public to believe that it is somehow connected to the Complainant.
According to the Complainant, the Respondent has no right or legitimate interests in respect of the disputed domain name. The Respondent should demonstrate rights or legitimate interests in the disputed domain name; if this was the case, since the burden of proof shifts to the Respondent once the Complainant states that the Respondent has no right or legitimate interest in the disputed domain name incorporating its trademark.
The Complainant argues that the Respondent is not known by the name LAMBORGHINI and that the Complainant has not permitted the use of its mark LAMBORGHINI by the Respondent.
The Complainant alleges that the Respondent does not offer or prepare to offer services or goods. The disputed domain name would resolve to a pretextual website allegedly offering rental of Lamborghini vehicles. However, no real offer of LAMBORGHINI vehicles would be available on the website. The website to which the disputed domain name resolved would be a copy of a publicly available template with few changes and no link to conclude any rental or any other action. Many links would be inactive and the website would not be essentially functional.
The Complainant demonstrates inconsistencies on the website related to the disputed domain name, such as the repetition of a photo of a Team Member with two different names, the use of placeholders, the lack of a valid address informed on the bottom of the page, and incoherent contact details.
It is mentioned by the Complainant that the use of a pretextual or a commercial website would not be considered fair use, as per the Policy.
The Complainant also mentions that there is no indication that the Respondent is active in Dubai.
Based on the above reasons, the Complainant argues that the registration and use of the disputed domain name have been made in bad faith.
Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The evidences presented demonstrate that the Complainant is the owner of various trademark registrations for LAMBORGHINI and marks containing the trademark LAMBORGHINI, including in the United Arab Emirates and in Pakistan.
The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of the word “rental” is not sufficient to avoid confusion between the disputed domain name and the Complainant’s trademark, since it is descriptive when used in connection with rental services. Likewise, the geographical indicator “Dubai” gives the idea that the disputed domain name resolves to a website owned by the Complainant or associated with it, related to rental of LAMBORGHINI vehicles in Dubai.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark LAMBORGHINI.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The trademark LAMBORGHINI is registered by the Complainant in several jurisdictions around the world, encompassing Dubai (which is the geographical identifier of the disputed domain name) and Pakistan, where the Respondent is located.
The mentioned trademark registrations owned by the Complainant predate the registration of the disputed domain name.
The disputed domain name comprises the LAMBORGHINI trademark in its entirety, with addition of a descriptive word and a geographical identifier that enhance the likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s trademark LAMBORGHINI is well known as a luxury vehicle mark. Thus, the fact that the disputed domain name comprises such a mark, in the circumstances of this case, is evidence of the Respondent’s bad faith.
Taking into account a) the originality of the mark, b) its fame, c) the fact that it was registered in the Respondent’s country as well and in the United Arab Emirates before the disputed domain name was registered, d) the additional of the descriptive word “rental” associating the disputed domain name to “rental of vehicles,” and e) the fact that the disputed domain name resolved to a pretextual website containing many inconsistencies, it is impossible that the Respondent did not know the Complainant’s marks at the time of the registration of the disputed domain name.
In view of the above and also considering that the disputed domain name currently resolves to an inactive page, this Panel finds under the circumstances that the Respondent has intentionally targeted the Complainant’s trademark in the disputed domain name.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith. 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.
Mario Soerensen Garcia
Sole Panelist
Date: June 10, 2019
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