WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc.
Case No. DTV2008-0010
1. The Parties
Complainant is Automobili Lamborghini Holding S.p.A., Sant’Agata Bolognese of Italy, represented by HK2 Rechtsanw�lte, Germany.
Respondent is Unity 4 Humanity, Inc., New York, of United States of America, represented by Anthony Galima, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2008. On July 21, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 21, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2008. The Response was filed with the Center on August 17, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 27, 2008. 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
Complainant is an Italian manufacturer of high performance sports cars based in Sant’Agata Bolognese, Italy. It was founded in 1963 by Ferrucio Lamborghini and was then known as Automobili Ferruccio Lamborghini. Complainant is now a wholly owned subsidiary of German car manufacturer Audi AG and is the holding company of the Lamborghini group.
Complainant is owner of a large number of national and international trade marks LAMBORGHINI. Previous UDRP cases have affirmed that LAMBORGHINI is a well-known mark with a strong reputation. See Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 ; Automobili Lamborghini Holding S.p.A. v. Andrew David Dawson,WIPO Case No. D2002-1003 ; Automobili Lamborghini Holding S.p.A. v. Primal Ventures Inc.,WIPO Case No. D2008-0548 .
Complainant uses “Lamborghini” in connection with a number of relevant TLD such as “.us” and corresponding domains are used by authorized dealers of Complainant like and . Complainant’s group promotes the Lamborghini cars in the Internet at “” with an interactive webpage, including detailed graphics, photos, footage and sound. Complainant also shows several video clips from television programs on its webpage.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights.
Complainant has adduced evidence that it is the owner of the LAMBORGHINI trade mark for high performance cars in many countries all over the world and continues to have rights in this mark. Complainant further asserts that LAMBORGHINI is a well known mark and cites previous UDRP cases which have affirmed this assertion.
Complainant contends that when judging semantic similarity between the disputed domain name and the trade mark LAMBORGHINI, the country code top level domain (“ccTLD”) “.tv” is not to be taken into consideration. It is well established that the specific top level of a domain name such as “.com”; “.org”; “.tv’ or “.net” does not affect the determination of the identity or similarity between a domain name and a trade mark. Complainant cites Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. 2000-1525; Hugo Boss A.G. v. Abilio Castro,WIPO Case No. DTV2008-0001; Rodale Inc. v. Cass Foster,WIPO Case No. DBIZ2002-00148; Carlsberg A/S v. Brand Live Television,WIPO Case No. DTV2008-0003. Complainant further contends that the ccTLD “.tv” may not primarily be interpreted as a designation for the country of Tuvalu because it remains a non-distinctive suffix commonly being interpreted as an abbreviation for “television”. Therefore, Complainant argues that merely adding a descriptive term to a known trade mark or name does not render it different or distinctive from that trade mark or name. In the present case, the term in the disputed domain name suggests that the domain name is related to an official TV channel from Lamborghini and creates at least the perception of a legal relationship between Complainant and Respondent.
Rights or Legitimate Interests
Complainant contends that it is only required to make out an initial prima facie case that Respondent lacks rights or legitimate interests. Once the prima facie case is made out, the burden of proof shifts to Respondent to demonstrate rights or legitimate interests in the domain name. Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name for the following reasons:
1. No bona fide offering of goods or services
Complainant contends that there is no indication of Respondent’s 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. Complainant’s use of its trade mark LAMBORGHINI predates the registration and use of the disputed domain name by more than 40 years. The content of the website which is hosted by the disputed domain name originates from Respondent’s other website at “”. On this website, Respondent offers various services in the areas of domain registration, hosting and website building. Complainant asserts that Respondent collects domain names for purposes of “sale, rent, lease and/or development” or to be “left dormant” if the owner of a trade mark refuses to cooperate with Respondent. Furthermore, Respondent advertises on its website prominently the TV channel of a car manufacturer that competes with Complainant. Complainant sent Respondent a warning letter after knowing that Respondent has registered the disputed domain name. Respondent responded by denying Complainant’s right in the disputed domain name and refuted the allegation that Respondent did not demonstrate any bona fide offering of goods or services. In fact, Respondent attempted in the email to sell to Complainant a contract for the development of a “Global Web Presence” which would finally have included the use of the disputed domain name. Complainant contends that Respondent commercially exploits the disputed domain name in various illegitimate ways including directing Internet users who are expecting products and services related to Complainant to its own commercial website with the intension to exploit visitors of the disputed domain name for its own financial gain; offering a contract to Complainant to use its well-known mark as a domain name only under the condition of an order of “Global Web Presence” from Respondent at a alleged price of USD 5,000 which is more than the out-of-pocket costs for the registration of the domain name; and keeping the disputed domain name that comprised Complainant’s well-known trade mark LAMBORGHINI in its portfolio for commercial exploitation like selling, renting or leasing.
2. Respondent is not commonly known by the disputed domain name
Complainant contends that Respondent uses the name Unity 4 Humanity, sometimes shortened to U4H. Thus, Respondent is not commonly known by LAMBORGHINI or “”. On the contrary, any usage of the well-known mark and name by Respondent for its business would be considered a violation of Complainant’s predating intellectual property rights. Respondent does not own any trade marks in the name LAMBORGHINI and a Google search for the term “” produces 8 million results, of which the first twenty are all related to Complainant and its products.
3. Respondent is not using the disputed domain for a non-commercial or fair use purpose
Complainant contends that Respondent is using the disputed domain name for promoting its own business, which constitutes commercial use and there is no non-commercial or fair use of the disputed domain name in the future cognizable. Complainant cites Volvo Trademark Holding AB v. e-motordealer Ltd,WIPO Case No. D2002-0036 . Although Respondent claimed to be making “fair use” of Complainant’s LAMBORGHINI trade mark, Respondent did not substantiate his claims with valid examples.
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith for the following reasons:
1. Circumstances indicate that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor for valuable consideration in excess of Respondent’s out-of-pocket costs.
2. The disputed domain name was registered in order to prevent Complainant from reflecting the mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct. The fact that Respondent collects “company specific” domain names at his “Domain Real Estate Center” clearly proves that Respondent engages in a pattern of conduct which commercially exploits third party rights.
3. By using the disputed domain name Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that a considerable part of Internet users will apparently and reasonably expect a domain name such as to host a program or tv channel which is provided by Complainant or that this is a website designated by Complainant for Tuvalu. By portraying himself as the owner of the most valuable domain portfolios regarding .tv-domains, Respondent creates the impression that the owner of the disputed domain name is Complainant or is at least related to Complainant. However, there is no such relationship. Respondent is not a licensee of Complainant and does not have permission or consent to use the LAMBORGHINI trade mark or to apply for any domain name incorporating this mark. Complainant contends that Respondent intentionally draws illegitimate profits from Complainant’s well-known mark by exploiting the attention of Internet users, who are attracted to a domain name containing the combination of a trade mark and the term “tv”, which is generally used to designate the television program of the owner of the trade mark. A good example of the same is “”, which is provided by Dailmer AG, the owner of the word mark MERCEDES-BENZ.
4. There are further indications of bad faith. Complainant contends that the list of examples of indications for a registration and use in bad faith in paragraph 4(b)(iii) UDRP is non-exhaustive. Complainant argues that when Respondent registered the disputed domain name on November 26, 2006 he knew of Complainant’s trademark due to its strong reputation. The registration of a domain name that is identical to a famous trade mark without authorization is in itself evidence of bad faith.
5. Complainant contends that Respondent’s exploitation of the LAMBORGHINI trade mark the value of which has been created solely by Complainant is a violation of Complainant’s exclusive rights and dilutes the distinctiveness of its well-known trade mark.
In a supplemental filing, Complainant draws the Panel’s attention to two UDRP cases Demand Media, Inc. v. Unity 4 Humanity, Inc. FA0709001082079 and Williams-Sonoma Inc. v. Anthony Galima d/b/a Unity 4 Humanity Inc. FA0803001163666 in which the panels ordered the transfer of both disputed domain names to the complainants.
B. Respondent
Respondent denies the allegations made by Complainant and requests for a finding against Complainant for Reverse Domain Name Hijacking. Respondent maintains that its “good faith” acquisition of the disputed domain name , prior usage, current usage, intended usage, business model/offerings and “Global Web Presence” clearly demonstrate bona fide legitimate rights to the disputed domain name. Respondent explains that as a result of the Internet and television merger; technological shifts; and the infusion of Bluetooth devices into traditional televisions, Respondent’s company U4H was incorporated in 2006. Respondent sought to purchase generic and/or descriptive ccTLDs for development.
In an e-mail communication dated August 29, 2008, Respondent, inter alia, requested the Panel to reject Complainant’s Supplemental Filing.
Identical or Confusingly Similar
Respondent argues that the disputed domain name is not identical or confusingly similar to Complainant’s LAMBORGHINI trade mark for the following reasons:
1. LAMBORGHINI is an extremely popular surname.
2. Respondent is in the market for the creation and upload, view and share of video clips in the Internet and in this market, the term “tv” is a qualifier.
3- Complainant’s LAMBORGHINI mark is associated or used in relation to scientific instruments, radios, cameras, sailing instruments, umbrellas, whips, boots, clothing and others but no where does Complainant’s trade mark filings refer to Dot TV Channels, Internet Television nor can its trade mark logically expand to encompass Dot TV by any stretch of imagination.
4. Respondent relies on Bridgestone Firestone, Inc., Bridgestone/ Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 in which the panel suggested that the use of a “.com” gTLD corresponding to a trademark will be in bad faith while the use of any other gTLD will not necessarily support such a presumption and the use of one those permutations other than the principle “.com” top level domain name suffix for purposes of commentary is a legitimate noncommercial and fair use.
4. Respondent contends that there can be no confusion between the disputed domain name and Complainant’s LAMBORGHINI trade mark because there is no similarity between “incorporating video content” into a gTLD and owning, developing and utilizing a Dot TV Channel. The disputed domain name since its inception has been utilized as a forwarding agent to U4H’s Registrar or the Registrar’s extension of their registrar the “Domain Real Estate Center”. No sane or logical person can confuse going to, or has associated the disputed domain with Complainant’s business and offerings.
5. Respondent also points out that it has made it impossible to “search” for LAMBORGHINI on any site contained within Respondent’s “Global Web Presence” of developed sites and/or “search” for LAMBORGHINI in all Search Engines such that it will lead to Respondent. When searching for “Lamborghini tv”, Respondent can never be found and in fact in most cases, Respondent cannot be found. Thus, Respondent contends that it is in no way, shape or form trying to confuse Complainant’s customers.
Rights or Legitimate Interests
Respondent contends that it has rights or legitimate interests in respect of the disputed domain name for the following reasons:
1. Respondent contends that today “.tv” is descriptive of or synonymous with Respondent’s business and offerings and not only is the “.tv” appendix functional (indicating a top level domain name commonly associated with television) , “.tv” domains have been defined and are commonly known as DOT TV Channels largely because of Respondent such as “Dot TV Center”; “Dot TV Home”; “Dot TV Channels”; “Dot TV Developers”; “Dot TV Information”; “Dot TV Guide”; “Projects 4 TV”; “Internet Television Merger” and “Global Web Presence”. In fact, Respondent argues that the designation of Dot TV () is clearly identified with Respondent as many technological experts, entities and individuals globally associate Respondent with pioneering, structuring and defining Dot TV Channels. Therefore it is inappropriate to lump Dot TV with other ccTLD’s especially when discussing Respondent because not only is the disputed domain name completely dissimilar and different from Complainant’s trade mark as a result of the addition of the ccTLD, it is clearly perceived and understood as a Dot TV Channel associated with U4H, created by U4H, under development by U4H, and part of U4H’s network of Dot TV Channels.
2. Respondent also contends that intellectual property rights such as trade marks rights are subject to fair use as the First Amendment allows a person/entity to sue another entity’s trade mark for purposes of commentary or parody. Respondent argues that the present proceeding is one such case and there are no laws and time restrictions as to how long an entity must develop a Dot TV Channel for such fair use purposes.
Registered and Used in Bad Faith
Respondent contends that it did not register and is not using the disputed domain name in bad faith for the following reasons:
1. Respondent did not acquire the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to Complainant and has never offered its sale for any price let alone those in excess of Respondent’s costs directly related to Dot TV.
2. Respondent did not register the disputed domain name in an effort to prevent Complainant from reflecting its mark in a corresponding domain name and in fact, Complainant already owns or utilizes domain names reflecting its mark. It was only until recently that it came to Complainant’s attention that the disputed domain name could be of use, interest and value to them that Complainant wishes to have possession of the disputed domain name.
3. Respondent has never disrupted Complainant’s business, whereas Respondent’s small intimate business has been severely disrupted and is teetering on the brink of financial chaos because of these proceedings.
4. Respondent contends that the disputed domain name is suggestive because it requires imagination or thought to determine what content lies at its address, for example, a fan-based site, surname site etc. In fact, it is not disputed that the term “Lamborghini” appears an obscene number of times in a Google search and the previous UDRP panel has recognized that “the extensive use of a generic term … can never give it distinctive or non-descriptive secondary meaning indicating origin.” (see Off Lease Only, Inc. v. Respondent Ford, FA 0706001023150). There is also no evidence of even initial interest confusion and this is not a case where Respondent’s website could only exist because of Complainant’s mark, business or website. Respondent is not trying to “pass itself off” as Complainant in order to defraud Complainant’s customers and in fact is doing something very different. Respondent is not capitalizing off of Complainant’s goodwill by doing anything illegal at its website. Respondent’s domain name merely redirects to Respondent’s sites which discuss Respondent’s television channel development, portfolio, and business model. With barely any visitors passing through , there can be no tarnishment of Complainant’s LAMBORGHINI trade mark.
5. Respondent contends that it has invested considerable time, effort, and capital in its business anthropology, philosophy, “Global Web Presence Solution”, Domain Registrar, Domain Portfolio, and the creation of Television Channels using the .tv ccTLD. Previous UDRP panels have found that such is a demonstrated preparation of a bona fide use, and thus a legitimate right in the domain name (see Catapillar v. Neal McKean, FA 0105000097303; Canned Foods, Inc. v. Ult. Search, Inc., FA 0012000096320; Oorah, Inc. v. Simchat Torah Belt Midrash, WIPO Case No. DTV2007-0003). Respondent points out that its primary investor invested in Respondent because of Respondent’s non-infringing developmental plans and the quality of Respondent’s .tv domain portfolio. The disputed domain name is part of Collateral Assignment and according to the UCC and Investor Agreements no two parties can have claims on the same collateral.
Respondent contends that Complainant has engaged in Reverse Domain Name Hijacking because it has brought the Complaint in bad faith with the knowledge of Respondent’s legitimate interests or rights, and good faith surrounding the disputed domain name. Respondent argues that the Internet is still in a state of infancy. The laws are unfortunately grey and do not adequately complement the intent, usage or architecture of the Internet. Through their Global Web Presence Solution, Global Web Presence of Developed sites, and core philosophies, Respondent contend that it is building to enrich the quality, content, structure and organization of the Web, while at the same time conforming to the minds and expectations of global Internet users.
Respondent argues that it is clearly the rightful owner of the disputed domain name because Complainant has treated its trade mark as a property right valuable in and of itself, rather than valuable for the product goodwill it embodies. Trade marks are limited entitlements to protect against uses that diminish the informative value of marks but Respondent did not diminish or dilute Complainant’s mark. It further contends that trade mark policy must be reconsidered during this new technological age created by the Internet Television merger and .tv ccTLD’s commonly recognized association with “television” if freedom of speech and expression as well as Respondent’s type of business and offerings are going to exist. It is ludicrous to assume that trade mark owners have legitimate rights to over 250 plus TLD’s and other seemingly limitless permutations. Furthermore, the increase sophistication of search engine technologies coupled with Internet users reliance upon them allow Internet users to target and find what they want when they want with little confusion.
6. Discussion and Findings
As a preliminary matter, the Panel shall address Complainant’s presentation of a Supplemental Filing and Respondent’s respective objection thereto. Neither the Policy nor the Rules explicitly provides for the submission of supplemental filings. Nevertheless, in accordance with paragraphs 10 (a)(b) and (d), and paragraph 12 of the Rules, a panel may, in its discretion, chose to admit or invite further filings. Generally, a panel’s determination will be guided by whether such supplemental information and allegations could have been previously provided in the complaint or response or are necessary to the presentation of a party’s case.
In the instant case, the Panel notes that Complainant’s Supplemental Filing refers to two published UDRP decisions, which would presumably be unfetteredly available to the public at large but, also, would almost surely have been discovered upon this Panel’s customary search of the Parties’ involvement in previous UDRP cases.
As such, the Panel denies Respondent’s objection and admits Complainant’s Supplemental Filings in as far as the UDRP cases to which it refers are publicly available and comprise part of the body of existent UDRP jurisprudence and is informative of the present Parties’ practices.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the LAMBORGHINI marks (both word and the logo) in many countries all over the world in relation to many classes of goods and services with a high degree of notoriety in relation to high performance, high priced sports cars. The Panel rules that Complainant has rights and continues to have such rights in the relevant LAMBORGHINI marks.
The disputed domain name consists of Complainant’s mark LAMBORGHINI in its entirety and the suffix “.tv”. In assessing the degree of similarity between Complainant’s trade marks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s LAMBORGHINI marks and the disputed domain name is to be considered from the perspective of the average Internet user.
Respondent has argued that Lamborghini is a popular or common surname and the combination of Lamborghini and “.tv” gives rise to a suggestive term which is not identical and not confusingly similar to Complainant’s LAMBORGHINI. The Panel finds that the term “Lamborghini” in Complainant’s LAMBORGHINI marks is the most distinctive portion of Complainant’s marks and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “Lamborghini” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. Although the Panel accepts that Lamborghini is a common popular surname, this does not negate the possibility of the surname acquiring a distinctive character through extensive factual usage. In fact, the Panel finds that Complainant’s LAMBORGHINI trade mark has through the years and extensive usage acquired not only a distinctive character that is indicative of a product origin but it has also attained the status of a well-known mark in many parts of the world. This finding is consistent with the findings of previous UDRP panels.
It is also an accepted principle that the addition of suffixes such as “.com”; “.net” being the generic top-level domain is not a distinguishing factor. However, Respondent argues that this accepted principle should not be applied to this case as “.tv” is a qualifier in the particular market of Internet television and sharing of video clips and “.tv” is synonymous with Respondent and its business model. The Panel is of the view that the term “.tv” is not distinctive on its own. There are many other domain names with a suffix “.tv” and Respondent cannot possibly claim that all these domain names are attributable to Respondent and its business model of Internet television. Viewed in this perspective, the term as a whole is not distinctive and cannot be differentiated effectively from Complainant’s LAMBORGHINI well-known marks. The Panel finds the disputed domain name to be confusingly similar to Complainant’s LAMBORGHINI marks both visually and aurally. Respondent made the argument that with so many more ccTLDs and the increasing number of gTLDs, domain names may be classified into different categories of goods and services just like the trade mark classification system in the physical world. Consequently, there can be no confusion between LAMBORGHINI and “”. With respect, Respondent’s argument is flawed. Despite the appeal of registering “.tv” domain names in light of the use of “tv” as a popular abbreviation of the word television, “.tv” remains the ccTLD for the island nation of Tuvalu. As such, the ccTLD suffix, as consistent with prior ccTLD domain name disputes governed by the UDRP, does not add distinctiveness to the second level of the domain name itself.
The Panel finds for Complainant for the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant and it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 trademark or service mark at issue.
Based on the following reasons the Panel finds that that Complainant has made out a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name:
1. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;
2. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
3. Complainant and its LAMBORGHINI marks enjoy a worldwide reputation particularly with regard to its high performance, high price sports cars. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the LAMBORGHINI marks are not such that traders could legitimately adopt them other than for the purpose of creating an impression of an association with Complainant.
To refute Complainant’s arguments, Respondent claimed that the designation of Dot TV () is clearly identified with Respondent as many technological experts, entities and individuals globally associate Respondent with pioneering, structuring and defining Dot TV Channels. Consequently, Respondent has rights and legitimate interests in the disputed domain name as it is clearly perceived and understood as a Dot TV Channel associated with U4H, created by U4H, under development by U4H, and part of U4H’s network of Dot TV Channels. However, the Panel is of the view that the term “.tv”, as explained above, is not distinctive on its own. There are many other domain names with a suffix “.tv” and Respondent cannot possibly claim that all these domain names are attributable to Respondent and its business model of Internet television. Therefore, the Panel finds that Respondent has not clearly established that it is commonly known by the disputed domain name through its business model.
Respondent also contends that it is 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. It argues that intellectual property rights such as trade marks rights are subject to fair use as the principles of free speech allow a person/entity to use another entity’s trade mark for purposes of commentary or parody. Respondent contends that the present proceeding is one such case and there are no laws and time restrictions as to how long an entity must develop a Dot TV Channel for such fair use purposes. The Panel is not persuaded by Respondent’s argument. Contrary to Respondent’s claims, Respondent has not submitted any documentary evidence of its preparations to use the domain name for purposes of fair use. There are no substantial contents (commentaries, parodies or satires) in the website to which the disputed domain name resolves which discuss or comment on Complainant’s company, products or services. On the contrary, the disputed domain name redirects the Internet traffic to Respondent’s Domain Real Estate Center. Respondent could not assert its right for fair use of Complainant’s LAMBORGHINI mark through a mere registration of the disputed domain name in the form of without proof of actual use of the said domain name for such legitimate noncommercial or fair use purposes. The argument that there are no laws and time restrictions as to how long an entity must develop a Dot TV Channel for such fair use purposes is an untenable one. The absence of persuasive evidence indicating use of the disputed domain name by Respondent for any legitimate non-commercial purpose only goes to strengthen Complainant’s case that Respondent is in fact not using the disputed domain name for legitimate non-commercial or fair use purposes.
For the reasons given above, the Panel finds that on a balance of probabilities, Respondent has not discharged its burden of proof to show that it has rights or legitimate interests in the disputed domain name.
The Panel finds for Complainant for the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.
Respondent contends that it did not acquire the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant and has never offered the disputed domain name for sale for a price in excess of Respondent’s costs directly related to the disputed domain name. Respondent also argues that it has invested considerable time, effort, and capital in its business anthropology philosophy, Global Web Presence Solution, Domain Registrar, Domain Portfolio, and the creation of Television Channels using the .tv ccTLD. Respondent asserts that previous UDRP panels have found that such may be a demonstrated preparation of a bona fide use, and thus a legitimate right in the domain (see Catapillar v Neal McKean, FA 0105000097303; Canned Foods, Inc. v. Ult. Search, Inc., FA 0012000096320; Oorah, Inc. v. Simchat Torah Belt Midrash,WIPO Case No. DTV2007-0003.)
After reviewing all the relevant evidence adduced before it, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith on the following grounds:
1. Although the issue of whether Respondent has rights or legitimate interests in the disputed domain name is a separate ground to be considered independent of the condition of bad faith under the UDRP, Respondent’s lack of rights or legitimate interests in the disputed domain name in the first place has a strong bearing on the question of Respondent’s state of mind at the time of registration. If he does not have rights or legitimate interests in the disputed domain name and if he has actual knowledge of the existence of Complainant and its trade marks at the time of registration, the registration of a disputed domain name which infringes the exclusive right of Complainant is indicative of bad faith on the part of Respondent. In the present case, the Panel has in the foregoing paragraphs given reasons why Respondent has not discharged its burden of proof to show that it has rights or legitimate interests in the disputed domain name. As for whether Respondent has actual knowledge of Complainant’s company and trade mark at the time of registration, the Panel is of the view that in this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of Complainant and its LAMBORGHINI marks, as well as the high level of notoriety of Complainant and its marks in the high performance sports car market (evidenced by the substantial business presence and extensive promotion and marketing activities), the Panel finds that it is highly unlikely that Respondent, a company based in the United States of America, would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain name. As a result of the high degree of notoriety in Complainant’s LAMBORGHINI mark, it is not one that traders could likely legitimately adopt in its entirety in a domain name. In the absence of contrary evidence and satisfactory explanations from Respondent, the conclusion one is likely to draw with respect to Respondent’s registration of a domain name that incorporates a world famous mark such as Complainant’s LAMBORGHINI is none other than for the purpose of creating an impression of an association with Complainant, which is indicative of bad faith.
2. Respondent’s entire case rests on his assertion that he is running a legitimate business online which is borne out the merger between television and the Internet and the technological advancement which allows Internet users to create, upload and share video clips online. The Dot TV channels are created for such purposes and Respondent has invested in a portfolio of “high value domain names” chosen for future development. The Panel finds that whether Respondent’s online business model can be considered legitimate is conditional on whether its portfolio contains domain names which do or do not infringe the exclusive rights of third parties either as business identifiers or as trade marks. Respondent cannot legitimately build a business based on the brand equity value created by others. Respondent is free to choose other words or terms and through work and ingenuity create and develop its own brand equity value in these domain names for his business. What he is not allowed to do is to take unfair advantage of third parties’ distinctive trade marks and profit from them. Respondent’s choice in the disputed domain name which contains a prominent and distinctive word mark LAMBORGHINI (belonging to Complainant) that has attained a high degree of notoriety worldwide is indicative of bad faith because in the absence of plausible explanation and persuasive evidence, such conduct is clear evidence that Respondent is taking an unfair advantage of the distinctive character of the well known mark for the benefit of its own online business.
3. The continued current use of the disputed domain name by Respondent without evidence of use for a legitimate non-commercial or fair use purpose further buttresses the conclusion that Respondent is most likely holding the disputed domain for commercial gain, which is indicative of bad faith registration and use.
4. There are at least two previous UDRP cases which disclose a pattern of consistent similar conduct by Respondent for the registration and subsequent use of domain names that ride on the brand equity value created by others in its business model and the panels in those cases consistently held that Respondent did not have legitimate interests and its conduct with regard to the dealing of the disputed domain names was in bad faith. See Demand Media, Inc. v Unity 4 Humanity, Inc. FA0709001082079 and Williams-Sonoma Inc. v Anthony Galima d/b/a Unity 4 Humanity Inc.
The Panel finds for Complainant in the third part of the test.
Reverse Domain Name Hijacking
For all the reasons stated above, the Panel finds that Respondent did not succeed in establishing that Complainant has engaged in Reverse Domain Name Hijacking in respect of the disputed domain name.
7. 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 name, be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: September 17, 2008
Full & Egal Universal Law Academy