The Complainant is Automobili Lamborghini S.p.A. of Sant-Agata Bolognese, Italy, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Guri Design, of Dubai, United Arab Emirates (“UAE”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2017. On May 24, 2017, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the Domain Name. On May 25, 2017, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute Resolution Policy – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 12, 2017.
The Center appointed Gareth Dickson as panelist in this matter on July 17, 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 is the registered proprietor of a number of trade mark registrations incorporating “Lamborghini”. It owns at least three registrations in the UAE for AUTOMOBILI LAMBORGHINI and AUTOMOBILI LAMBORGHINI & BULL IN SHIELD DEVICES (the “Lamborghini Device” and the “Lamborghini Device Marks”). It is also the proprietor of International trade mark number 460178 for LAMBORGHINI and of European Union trade mark number 001098383 for LAMBORGHINI (the “Mark”). The Mark was registered on June 21, 2000 and protects, amongst other goods and services, “motors” and “vehicles”.
The Domain Name was registered by the Respondent on May 31, 2016. It directs users to a website featuring the Lamborghini Device, an image of a car that is recognizable as one of the Complainant’s cars (that is, it is a supercar displaying the Lamborghini Device), numerous appearances of the Mark and a heading informing visitors that the Domain Name is for sale and inviting them to “Send your Inquiry”. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is commonly referred to as “Lamborghini” and that it is the registered proprietor of various trade marks featuring the Lamborghini Device, as well as the Mark. It provides extracts from the trade mark registers of the UAE and the European Union. The Complainant also asserts that LAMBORGHINI is a well-known trade mark and is of strong reputation. It refers to various earlier UDRP decisions in support of that contention. While stating that the mark LAMBORGHINI is inherently distinctive, the Complainant notes that “Lamborghini” is also the surname of its founder. The Complainant concludes that, ignoring the country code Top-Level Domain (“ccTLD”) “.ae”, the Domain Name is identical to the Mark and confusingly similar to the Lamborghini Device Marks.
The Complainant further argues that the Respondent is offering the Domain Name for sale, and is using the Lamborghini Device and the Mark. The Complainant says there is no indication of the Respondent’s 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. It contends that the Respondent is not commonly known by “Lamborghini” and states that no permission to use “Lamborghini” has been granted to the Respondent by the Complainant. In the Complainant’s view, the Respondent’s effort to sell the Domain Name excludes the possibility of noncommercial or fair use and permits an inference that the Respondent has no rights or legitimate interests in the Domain Name.
Finally, the Complainant argues that the offering for sale of the Domain Name, given its identity to the Mark and the content of the website on which the offer for sale is made, is an example of the Respondent’s bad faith, even though there is no evidence that the Respondent attempted to sell the Domain Name to the Complainant, or what the sale price for the Domain Name might be. It states that because “Lamborghini” is not a word in the Arabic language, the Domain Name is in Latin characters, and the website accessed via the Domain Name contains numerous references to the Mark and an image of one of the Complainant’s cars, the Respondent must have known of the Complainant’s trade marks when registering the Domain name and/or designing its website; and states that this is sufficient to establish the Respondent’s bad faith registration or use of the Domain Name. There is, according to the Complainant, no explanation other that the Respondent’s prior knowledge of the Complainant’s trade marks as to why it has registered the Domain Name, nor can there be any conceivable legitimate use of the Domain Name by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Paragraph 6(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the Mark. The Mark is incorporated in the Domain Name in its entirety and without any distinguishing elements. It is appropriate to ignore the ccTLD “.ae” when comparing the Domain Name to the Mark as it has no trade mark significance for Internet users, who will see it as a technical requirement of domain name registration, especially given the reputation enjoyed by the Complainant all around the world.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights. This being so, there is no need for the Panel to consider further the Complainant’s argument that LAMBORGHINI can be both inherently distinctive and a surname. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s statement that it has not given the Respondent permission to use the Mark in the Domain Name.
The Panel also accepts that the Respondent is not commonly known as “Lamborghini”, and that it has made no use of, nor made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
The Panel is not prepared to hold that offering to sell a domain name by itself permits an inference that the Respondent has no rights or legitimate interests in a domain name: that question will depend on the nature of the offer of sale and on any inherent or acquired distinctiveness of the trade mark at issue. In the present Complaint, however, the Respondent’s interest in the Domain Name is derived solely from the value of the Complainant’s trade mark. In other words, the Respondent has no interest in the registration and use of the Domain Name that is independent of the Complainant’s interest in the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered or is Being Used in Bad Faith
Given the fame of the LAMBORGHINI mark and the frequent references to the Complainant’s trade marks on the website accessible via the Domain Name, the Panel accepts that the Respondent knew about the Complainant’s trade marks before registering the Domain Name and sought to capitalize on those trade marks by registering the Domain Name and by choosing to include numerous references to the Complainant on its website, without the Complainant’s permission or any other right to do so. Such use of those trade marks is inconsistent with the exclusive rights granted to the Complainant.
On the evidence provided by the Complainant, the Panel finds that the Domain Name was registered for the purpose of selling the Domain Name for a profit, most likely to the Complainant. Such conduct falls within the ambit of paragraph 6(b)(i) of the Policy. The Respondent has not participated in these proceedings to offer any alternative explanation for its registration and use of the Domain Name. The Panel finds that the Respondent has used the Domain Name in bad faith. Although this is sufficient to dispose of these proceedings, the Panel also finds that the Respondent registered the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Gareth Dickson
Panelist
Date: July 31, 2017
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