The Complainant is Automobili Lamborghini S.p.A., Italy, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Johan Schepers, Belgium.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2021, 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 April 16, 2021, 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 April 19, 2021.
On April 16, 2021, the Center transmitted an email in English and German to the Parties regarding the language of the proceeding. In the Complaint, the Complainant requested that German be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit a formal response, however, the Respondent sent an email communication in English to the Center on April 27, 2021. On April 30, 2021, the Complainant submitted a supplemental filing in German in reply to the Respondent communication. Accordingly, the Center notified the Parties that it would proceed with the Panel appointment process on May 18, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on May 27, 2021. 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. Procedural Matters A. Language of the ProceedingsThe Complaint has been filed in German. Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. According to information provided from the concerned Registrar, the language of the registration agreement for the disputed domain name is English. The Complainant could neither provide an agreement nor present compelling reasons or arguments that German be the language of the proceeding. The Panel notes that the content of the website that the disputed domain name resolves to is provided in Dutch, that the Respondent has communicated in the present proceeding in English, and that the Complainant has submitted a reply in reaction to the Respondent’s English communication. The Panel therefore decides that the decision will be written in English.
B. Supplemental FilingThe Complainant submitted an unsolicited supplemental filing after the Notification of the Complaint. The consensus view is that unsolicited supplemental fillings are generally discouraged. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The supplemental filing contained additional arguments regarding the Respondent’s lack of rights or legitimate interests in the disputed domain name as well as the bad faith registration and use of the disputed domain name relating to a communication and actions by the Respondent made after the submission of the Complaint. Noting such information was unavailable at the time of filing the Complaint, the Panel will consider the supplemental filing.
5. Factual BackgroundThe Complainant is a leading sports car manufacturer founded 1963 in Italy and distributes its
high-performance sports cars under the trademark LAMBORGHINI worldwide. The Complainant holds registrations for the trademark LAMBORGHINI in a number of countries around the world, including in the European Union as exhibited by Registration No. 001098383, registered since June 21, 2000, in the United States of America, as exhibited by Registration No. 74019105, registered since August 21, 1990, and as an International trademark, as exhibited by Registration No.460178, registered since March 28, 1981, designating especially Benelux, Germany, and France (Annex 5 and 6 to the Complaint).
The Complainant is also the owner of, inter alia, the domain name
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its LAMBORGHINI trademarks.
The Respondent used the disputed domain name for redirecting internet users to a website where motor vehicles from various manufacturers are offered for sale (Annex 7 and 8 to the Complaint).
The disputed domain name
The Complainant is a famous manufacturer and distributor of high-performance sports cars. The Complainant distributes its sports cars under the famous trademark LAMBORGHINI and holds registrations for this trademark in various countries around the world. The mark LAMBORGHINI is well known and the Complaint’s rights in that mark predate the Respondent’s registration of the disputed domain name.
The disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates in its entirety the LAMBORGHINI trademark and simply adds a geographic identifier and the generic Top-Level Domain (“gTLD”) “.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name – the Complainant has not licensed or otherwise permitted the Respondent to use its trademark LAMBORGHINI.
The Respondent has moreover registered and used the disputed domain name in bad faith. The Respondent knew or must have known of the Complainant’s famous trademark LAMBORGHINI when it registered the disputed domain name and it used the disputed domain name for redirecting Internet users to a competing website.
In a supplemental filing, the Complainant further indicated the Respondent’s lack of rights or legitimate interests in the disputed domain name as well as the bad faith registration and use of the disputed domain name relating, noting in particular a communication by the Respondent made after the submission of the Complaint wherein the Respondent offered to sell the disputed domain name to the Complainant.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. However, on April 27, 2021, the Respondent sent an email communication to the Center claiming that it has rights and legitimate interests in using the disputed domain name, since it sells Complainant’s products and it provides an exclusive store and the city of Antwerp is the Respondent’s city in Belgium. The Respondent also claims to have owned the disputed domain name for over 10 years. The Respondent did not put forward any kind of evidence in support of its claims and allegations.
7. Discussion and FindingsAccording to 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; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark LAMBORGHINI.
The disputed domain name is confusingly similar to the Complainant’s registered trademark LAMBORGHINI since it entirely contains this distinctive mark and only adds the name of the Dutch city “antwerp”, together with a hyphen.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview 3.0).
Finally, it has also long been held that gTLDs are generally disregarded when evaluating the confusing similarity of a disputed domain name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0 ).
Although the Respondent failed to submit a formal Response, the Respondent put forward allegations in an email communication from April 27, 2021, to the Center. The Respondent claimed in this communication rights and legitimate interests – selling Complainant’s products, being an exclusive store, and Antwerp being Respondent’s city in Belgium; however, the Respondent did not put forward any evidence with regard to these allegations.
In contrast to the Respondent’s unsubstantiated allegations, the evidence put forward by the Complainant in the Complaint (especially with regard to the Annexes presented by the Complainant), as well as the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark LAMBORGHINI in a domain name or in any other manner, supports the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Even taking into account the Respondent’s unsubstantiated claims, for the sake of argument, the unauthorized use of the disputed domain name to redirect to the Respondent’s competing website offering motor vehicles of various manufacturers, including those of competitors of the Complainant, would not be a bona fide offering of goods or service or a legitimate noncommercial or fair use, and so would be unable to overcome the Complainant’s prima facie case.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely-known mark and a geographic term, and the use of the disputed domain name, taking advantage of the Complainant’s mark to attract Internet users to the Respondent’s competing website for profit, can not be considered fair as these falsely suggest an affiliation with the Complainant that does not exist. See section 2.5 of the WIPO Overview 3.0.
Accordingly, the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad FaithAs stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson,
WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainants must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The Complainant is the owner of the distinctive and famous registered trademark LAMBORGHINI, and has registered and used such trademark in many jurisdictions, including Belgium, long before the registration of the disputed domain name. The Respondent sells motor vehicles; it is therefore inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights in the trademark LAMBORGHINI. Registration of the confusingly similar disputed domain name with knowledge of the Complainant’s trademark supports a finding of bad faith in these circumstances.
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
The Respondent moreover actively used the disputed domain name by redirecting Internet users to a website where motor vehicle of various manufacturers, including those of competitors of the Complainant, are put up for sale.
Therefore, the Panel is convinced that the Respondent registered the disputed domain name to take unfair advantage of the reputation of the Complainant’s well-known trademark LAMBORGHINI, and in so doing to disrupt Complainant’s business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.
On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
8. DecisionFor 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
Peter Burgstaller
Sole Panelist
Date: June 7, 2021