WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobili Lamborghini Holding S.p.A. v. Andrew David Dawson
Case No. D2002-1003
1. The Parties
Complainant is Automobili Lamborghini Holding S.p.A., a company incorporated under Italian law with its principal place of business in Sant'Agata Bolognese, Italy ("Complainant"). Complainant's authorized representative is Philip Koch of HK2 Rechtsanwälte, with offices in Berlin, Germany.
Respondent is Andrew David Dawson of Lancashire, United Kingdom of Great Britain and Northern Ireland ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <lamborghini.biz> ("the Domain Name").
The registrar is Register.com of New York, United States of America ("the Registrar").
3. Procedural History
The Complaint, in accordance with the Restrictions Dispute Resolution Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, and the Uniform Domain Name Dispute Resolution Policy, adopted by ICANN on October 24, 1999, ("the Policy"), was electronically filed with the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center ("the Center") on October 29, 2002. The hardcopy version of the Complaint was received on November 5, 2002. An Acknowledgement of Receipt was sent by the Center to Complainant and Respondent by e-mail on October 31, 2002.
On October 31, 2002, a Request for Registrar Verification was transmitted to the Registrar. On the same date, Registrar confirmed by e-mail that the Domain Name is registered through the Registrar, that Respondent is the current registrant of the Domain Name and that the Policy is applicable to the Domain Name.
On November 5, 2002, a Notification of Complaint and Commencement of Administrative Proceedings ("the Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on November 25, 2002, by which Respondent could make a Response to the Complaint.
On November 22, 2002, Respondent sent a fax message to the Center, in which he refers to a settlement offer made by Complainant's authorized representative on November 21, 2002, in which he would be paid EUR 300 in compensation for his costs for registering the Domain Name, if Respondent in return would voluntarily transfer the Domain Name before the panel in the RDRP/UDRP dispute was to be appointed. Respondent stated that he had accepted that offer.
On November 25, 2002, Complainant's authorized representative requested the Center to suspend the procedure until December 18, 2002, given the fact that Respondent had announced that he would transfer the Domain Name to Complainant voluntarily. On November 26, 2002, the Center confirmed to both parties that the proceedings were suspended until December 18, 2002. The Center announced that upon the expiry of this date, the proceedings would be deemed terminated, unless it received a request in writing from the Complainant to reinstitute proceedings, in which event all time periods would be calculated from the reinstitution date.
On December 17, 2002, Complainant's authorized representative requested the Center to reinstitute the suspended proceedings.
After the proceedings were suspended, the Center received a number of e-mails from Respondent and an e-mail from Complainant's authorized representative of December 18, 2002. From these e-mails the Panel deducts that Respondent and Complainant's authorized representative disagree whether or not Respondent correctly fulfilled the conditions of the settlement agreement. The Panel will not consider these e-mails, as apparently the domain name has still not been transferred by Respondent, while the condition set by the Center for re-instituting the proceedings has been met. Consequently, the Panel must decide, pursuant to the Policy, whether or not the requirements of Paragraph 4(a) of the Policy, set out below under 5 have been met by Complainant.
On December 20, 2002, the Center sent a Notification of Respondent Default to the parties, as the term set for the filing of the Response had lapsed.
On January 7, 2003, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist and the Projected Decision Date was set at January 21, 2003.
4. Factual Background
The following facts, supported by evidence and not disputed by Respondent, are established.
Complainant is a wholly owned subsidiary of Audi AG, one of the world leading car manufacturers. Complainant, or its wholly owned subsidiaries, manufactures one of the world's most famous luxury sports cars under the trademark Lamborghini. Complainant has been producing sports cars since 1963. In 2001, the Complainant's group revenue amounted to EUR 65 million and Complainant employed approximately 500 employees. Complainant sold 297 sports cars in 2001.
Respondent registered the Domain Name on March 29, 2002. Under the Domain Name, a website is posted, captioned "Welcome to Lamborghini.biz". On this website, which has apparently been automatically generated by the host provider, a number of links are posted. From the annexes to the Complaint the Panel deduces that until at least September 26, 2002, the visitor to the website was invited to make an offer to buy the Domain Name, to which end the viewer could fill out an amount in an electronic form and click on the "make offer" button in the upper right corner. A minimum offer of USD 200 was required.
The invitation to make an offer has since been removed.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant, to obtain the requested remedy, must prove each of the following:
(i) that the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
6. Parties’ Contentions
Complainant contends that the Domain Name is identical to several LAMBORGHINI marks owned by Complainant. Complainant states that the presence of the .biz gTLD in the disputed Domain Name is not relevant, and states that the capitalization of its trademark is not relevant in establishing whether the Domain Name is identical. Alternatively, Complainant states that the Domain Name is to a high degree confusingly similar with its trademarks.
Complainant states that Respondent has no rights or legitimate interests in the Domain Name, as none of the three privileges provided in Paragraph 4(c) of the Policy are present in this case. Complainant states that there is no relationship between Complainant and Respondent; that Respondent is not commonly known by the name "Lamborghini"; that Respondent does not appear to have any trademarks registered including the string LAMBORGHINI; that Respondent apparently did not use nor prepare to use the Domain Name in connection with a bona fide offering of goods; that a commercial or business use of the Domain Name would be legally impossible without infringement of Complainant's trademarks; and that Respondent offered the Domain Name for sale.
Complainant contends that Respondent registered and is using the Domain Name in bad faith. Complainant states that the sole use of the Domain Name is to offer it for sale, so that Respondent has registered the Domain Name primarily for the purpose of selling it to Complainant or a competitor of Complainant for valuable consideration in excess of his out of pocket costs; that the choice of the Domain Name cannot have been coincidental; that there seems to be no way that Respondent may not have been aware of Complainant's trademark; that the lack of any legitimate interest improves the finding that Respondent has acquired and used the Domain Name in bad faith; that no plausible explanation exists as to why Respondent selected the name "Lamborghini" as part of the Domain Name other than to trade on the goodwill of Lamborghini; that Respondent used the Domain Name in bad faith by offering it for sale, because the value which Respondent seeks to secure from sale of the Domain Name is based on the underlying value of Complainant's trademark; and that for over half a year Respondent did not use the Domain Name for other purposes than the offering to sell it.
Respondent has not filed a response.
7. Due Process
Where, as in this case, a Respondent does not submit a Response, the rules of due process require the Panel to verify, to the extent possible, that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documentation, that this is the case. Respondent has extensively corresponded with the Center by email about the proceedings, from which correspondence it becomes fully clear that Respondent received the Complaint, and was aware of the proceedings and the terms set, but apparently has declined to file a Response.
8. Discussion and Findings
a. Trademark Rights
Complainant has, in annexes to the Complaint, provided ample evidence of its rights to the word mark LAMBORGHINI, registered for several goods and services in several classes and in several countries, including the United Kingdom, the country of residence of Respondent, and the European Community, extending to Respondent's country of residence as well.
Furthermore, the Panel considers the mark LAMBORGHINI to be a well-known mark on the European as well as the UK market. Complainant has substantiated this by providing data on revenues, advertising and promotion spending and by showing that using the string LAMBORGHINI as a search pattern in the Google.com search engine results in approximately 599.000 hits, while most of the first 100 of those links lead to pages dealing with the cars of Complainant, including several websites run by devoted fans or Lamborghini clubs.
b. Identical or Confusingly Similar
The Domain Name consists of a combination of the word "lamborghini" and the ".biz" gTLD suffix. The Panel finds the Domain Name identical to the trademark LAMBORGHINI, as the ".biz" suffix only indicates that the Domain Name is registered in the .biz gTLD.
c. Rights or Legitimate Interests
By not submitting a Response, Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the Domain Name.
Furthermore, considering that Respondent has not contested that he currently does not use the Domain Name, that it currently does not resolve to a website created by Respondent and that Respondent has not stated that the Domain Name is used for some other on-line presence of Respondent, there are no indications that Respondent could demonstrate any right or legitimate interest in the Domain Name.
The Panel therefore finds that Respondent has no right or legitimate interest in the Domain Name.
d. Bad Faith
Respondent has, by not submitting a Response, failed to rebut the arguments raised by Complainant to support its opinion that Respondent has registered and is using the Domain Name in bad faith.
Given the LAMBORGHINI trademark’s strong reputation as discussed above under 8(a) and that Respondent has failed to bring forward any circumstances indicating any actual or contemplated good faith use which would not infringe the LAMBORGHINI trademark, or his unawareness of the LAMBORGHINI trademark at the time of registration of the Domain Name, the Panel finds it unlikely that (i) Respondent could commercially use the Domain Name without violating Complainant’s trademark right, and (ii) Respondent would have selected the Domain Name without knowing of the reputation of that mark.
This justifies the conclusion that both the registration and the use of the Domain Name have been made in bad faith. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000), in which the Panel concluded that the domain name was so obviously connected with such a well-known product (trademark) that its very use by someone with no connection with the product (trademark holder) suggested bad faith.
The Panel therefore concludes that Complainant has supplied sufficient evidence that Respondent's registration and use of the Domain Name have been made in bad faith.
On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders the registration of the Domain Name <lamborghini.biz> be transferred to Complainant.
Wolter Wefers Bettink
Dated: January 21, 2003