The Complainant is Automobili Lamborghini Holding S.p.A. of Italy, represented by Piper Alderman, Australia.
The Respondent is Rose Bay Automotive Pty Limited of Australia. 2. The Domain Names and Registrar
The disputed domain names (the "first disputed domain name") and (the "second disputed domain name") are registered with GoD, LLC ("the Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2014 the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain names;
(b) the first disputed domain name was registered on February 25, 2006 and transferred to the Registrar in the name of the Respondent on February 21, 2014;
(c) the second disputed domain name was registered on February 21, 2006 and transferred to the Registrar in the name of the Respondent on March 19, 2014;
(d) the disputed domain names are both registered in the name of the Respondent and the contact details are correct;
(e) the registration agreements are in English;
(f) the disputed domain names were registered subject to the .au Dispute Resolution Policy (the "Policy"), and the Policy applies to both disputed domain names.
On July 24, 2014, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (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 July 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2014.
The Center appointed Mary Padbury and Michael Spence as panelists and Warwick Rothnie as presiding panelist (collectively "the Panel") in this matter on September 16, 2014. The Panel finds that it was properly constituted. The panelists have each 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 well-known manufacturer of cars. Its predecessor first commenced in business in 1963. It vehicles are amongst the world's most famous luxury sports cars.
The Complainant is the owner of numerous registered trademarks around the world for, or which include, LAMBORGHINI, the earliest of which appears to be Italian registered trademark number 326126 for LAMBORGHINI, registered on October 21, 1980 for a range of goods in International Classes 3, 4, 9, 12, 14, 16, 18, 25, 28 and 34. Other registrations include:
(a) Community Trademark No. 1098383 for LAMBORGHINI, registered on June 21, 2000 in International Classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37 and 41;
(b) United States of America Registered Trademark No. 1622382 for LAMBORGHINI, registered on November 13, 1990 in International Class 12;
(c) Australian Registered Trademark No. 371147 for the device of a bull on a shield with LAMBORGHINI emblazoned above it, registered on February 4, 1982 for automobiles and parts and accessories therefore in International Class 12;
(d) Australian Registered Trademark No. 1239086 for LAMBORGHINI, registered on February 28, 2008 in International Classes 12 and 28.
From the materials submitted in the Complaint, it appears that the Respondent provides car servicing and maintenance services.
As noted above, both disputed domain names were first registered in February 2006.
In November 2013, there was correspondence between the Respondent and lawyers for the Complainant. These culminated on November 27, 2014 with the Respondent providing the Complainant's lawyers written undertakings, amongst other things, to cease using "Sydney Lamborghini Service", "Lamborghini Sydney Service" or the word "Lamborghini" in any company, business or trading name and also to cease using the first disputed domain name for any website in connection with the Respondent's business. The Respondent, however, refused to transfer the first disputed domain name to the Complainant
On February 6, 2014, the domain name was registered with the Registrar.
As noted above, the Respondent registered the first disputed domain name with the Registrar on February 21, 2014.
On March 19, 2014, the domain name was registered with the Registrar. Also, on that date, the Respondent registered the second disputed domain name with the Registrar.
On April 4, 2014, the Respondent offered to transfer all four domain names, including the two disputed domain names, to the Complainant for the sum of AUD 10,000. That offer was made in response to a further letter of demand from the Complainant's lawyers.
The domain names and are the subject of a separate proceeding under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). 5. Discussion and Findings
No response has been filed. The Center has properly notified the Complaint to the Respondent at the contact details in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Center has satisfied its notification requirements under the Policy and the Rules.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of each disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, 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 disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, each disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above. A number of these are for the word LAMBORGHINI alone. Others are for the word LAMBORGHINI over a bull on a shield. Although the bull is much larger, the Panel considers that the word LAMBORGHINI is nonetheless a distinctive element of the trademark as, amongst other things, that is a natural verbal reference point for that trademark.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant's trademarks. See, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Both disputed domain names consist of the Complainant's registered trademark, LAMBORGHINI, plus a descriptive term and the suffix ".".
In undertaking that comparison, it is permissible in the present circumstances to disregard the "." component of the disputed domain names as a functional aspect of the domain name system. See Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.1
The descriptive terms, "Sydney Service" in the first disputed domain name and just "Service" in the second disputed domain name are entirely apt descriptions for services associated with the Complainant such that notional users of the Internet could well expect the disputed domain names to indicate a relationship to the Complainant. That is also the case in respect of the Complainant's trademark in the form of the shield device since, as discussed above, the word LAMBORGHINI is a distinctive component of that trademark.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in each disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a 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 trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is, or likely to be, in the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.
The Complainant states that it has no association with the Respondent and has not authorized the Respondent to use the trademark LAMBORGHINI in the disputed domain names.
The disputed domain names are plainly not derived from the Respondent's name.
It appears that the Respondent, or possibly an associated entity, may have been carrying on business by reference to the name "Lamborghini Sydney Service" prior to November 27, 2013.
However, on that date the Respondent undertook to stop using, amongst other things, LAMBORGHINI in any company, business or other trading name and to cease use of the first disputed domain name for any website related to the Respondent or its services.
Unlike the first disputed domain name, the second disputed domain name was not the subject of any specific demands or any specific undertaking in the November correspondence. However, the word LAMBORGHINI is the distinctive component of that disputed domain name.
Whatever may have been the case prior to November 27, 2013, given the Respondent's above mentioned undertaking, the Panel considers the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in either disputed domain name. The Respondent has not sought to rebut the Complainants' prima facie case. Accordingly, the second requirement under the Policy has been established. C. Registered or Subsequently Used in Bad Faith
In contrast to the UDRP, the Complainant must establish that each disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
Although the Respondent's letter of April 4, 2013 did not apportion the offered price among the four domain names it offered to transfer for AUD 10,000, the Panel readily infers that the amounts to be attributed to the two disputed domain names exceed any out-of-pocket costs likely to be incurred in relation to their registration. While registration fees for domain names in the "." space differ, they typically do not exceed AUD 30 for a two year period.
In addition, all four names were offered as a package together with an assertion of entitlement of the Respondent to continue their ownership.
In the circumstances, the Panel considers that the offer to transfer the disputed domain names with the two ".com" domain names for AUD 10,000 constitutes use of both disputed domain names in bad faith under the Policy. Accordingly, the third requirement under the Policy is also satisfied. 6. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Warwick A. Rothnie
Presiding Panelist
Mary Padbury
Panelist
Michael J. Spence
Panelist
Date: October 1, 2014
1 The Panel finds UDRP precedent instructive where appropriate, as the Policy is largely based on the UDRP with substantial similarities.
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