The Complainant is Automobili Lamborghini S p.A., Italy, represented by HK2 Rechtsanwälte, Germany.
The Respondent is jjoest, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2019, 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 December 12, 2019. 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” 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 December 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on January 13, 2020. 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 operates a business founded in 1963 based in Italy manufacturing and distributing high performance sports cars and branded merchandise. The Complainant holds registrations for the trademark LAMBORGHINI in a number of countries, including in the United States, as exhibited by Registration No. 74019105, registered since November 13, 1990. The Complainant is also the owner of, inter alia, the domain name The Disputed Domain Name The Complainant cites its trademark registrations of the trademark LAMBORGHINI in various countries as prima facie evidence of ownership. The Complainant submits that the mark LAMBORGHINI is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to perpetrate an email scam, and contends that such a Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used to further the perpetration of a fraud as part of a “phishing” scheme. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the 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 The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LAMBORGHINI in numerous countries including the United States and Europe. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the LAMBORGHINI trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark LAMBORGHINI; (b) with the letter “i” - where it first appears - replaced by the letter “l”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “lamborghlni”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the substitution of one letter for another: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel accepts the Complainant’s contention that the “Respondent exchanged the letter ‘i’ against the letter ‘l’, which is specifically confusing because the small letter ‘l’ looks like the letter ‘i’ written in capital letters (‘I’)” and that these elements that do not prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark LAMBORGHINI is not a dictionary word but rather a highly distinctive and well-known name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the Respondent “uses the disputed domain name as email-address … for fraudulent e-mails … [and that the] Respondent used this email address to send an email to employees of (a LAMBORGHINI distributor)” purporting to be “a Sales Support Advisor of Complainant and that Complainant’s account for incoming payments had been changed” with new bank account details to be advised also by email. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using email communications pretending to be from employees of a corporate entity operating under the brand LAMBORGHINI to seek from the recipient of those communications private and sensitive commercial information with the purpose of misleading the recipient based on the wide recognition of the Complainant’s mark LAMBORGHINI. The Complainant further contends that the Respondent is also using the logo, and other contact details of the Complainant to reinforce the false impression that the fraudulent communications are legitimate. In this respect, the Panel notes that the Disputed Domain Name does not resolve to a website. Naturally too, in view of the Complainant’s allegations, the example of scam email provided in uncontested evidence does not accurately nor prominently disclose the unauthorized nature of the Respondent’s relationship with the Complainant. It could therefore be inferred that the Respondent was opportunistically using the Complainant’s mark in the furtherance of the perpetration of a fraud. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark LAMBORGHINI is such a famous mark that it would be inconceivable that the Respondent might have registered the mark without knowing of it. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Automobili Lamborghini Holding S.p.A. v. Andrew David Dawson,WIPO Case No. D2002-1003 (“the Panel considers the mark LAMBORGHINI to be a well-known mark on the European as well as the UK market.”); Automobili Lamborghini Holding S.p.A. v. Primal Ventures Inc.,WIPO Case No. D2008-0548 (“the Respondent must have known of the Complainant’s famous LAMBORGHINI trademark”); Automobili Lamborghini Holding S.p.A v. OneandOne Private Registration, and Jill Calangian,WIPO Case No. D2008-1443 (“the well-known LAMBORGHINI mark”); Automobili Lamborghini S.p.A. v. Louis Rich, J L RICH,WIPO Case No. D2014-1259(“The Complainant is the well-known manufacturer of cars”); Automobili Lamborghini S.p.A. v. Ali Asgahr, Rent Lamborghini Dubai,WIPO Case No. D2019-0940 (“The Complainant’s trademark LAMBORGHINI is well known as a luxury vehicle mark”). Further, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by almost 30 years. Further, the Panel notes that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (See WIPO Overview 3.0, section 3.3). The Panel accepts the Complainant’s submission that the most likely reason for the Respondent registering the Disputed Domain Name and then using it to send a fictitious email, is that the Respondent was attempting to perpetrate a fraud. On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive the recipient of the phishing email into believing it was a legitimate communication from a domain name associated with the Complainant’s LAMBORGHINI brand. The obvious risk of deception or confusion as to the origin of such an email, or affiliation of the email communication with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark LAMBORGHINI and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating one or more email addresses comprised of the Disputed Domain Name then has used that email address to pretend to be an employee of the Complainant, for the purpose of obtaining sensitive commercial information from a distributor of the Complainant’s products, an activity sometimes referred to as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814; Pfizer Inc v. Michael Chucks / Whoisguard Protected, Whoisguard Inc.,WIPO Case No. D2014-0887; Accor v. SANGHO HEO / Contact Privacy Inc.,WIPO Case No. D2014-1471). Accordingly, the Panel finds that 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 Nicholas Weston
(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. A. Identical or Confusingly Similar
Sole Panelist
Date: January 15, 2020
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