The Complainant is Automobili Lamborghini Holding S.p.A. of Bolognese, Italy represented by HK2 Rechtsanwälte, Germany.
The Respondent is George Salazar / Jorge Salazar of Santiago, Chile.
The disputed domain names <lamborghiniargentina.com>, <lamborghinibrazil.com>, <lamborghinichile.com> and <lamborghinimexico.com> are registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 5, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On May 5, 2010, Wild West Domains, Inc. 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 7, 2010. 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.
The Complainant is a manufacturer of luxury sports cars, and is a wholly owned subsidiary of the Germany Company Audi AG. It markets its sports cars under the trademark LAMBORGHINI and has a number of trademark registrations for word and figurative marks. Some of its registered marks are: CTM trademark 001098383, dated August 3, 1999, covering the European Union countries, in classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37 ,41 and United States trademark 74019105, dated November 13, 1990, in international class 12.
The Respondent has registered the disputed domain names on the following dates:
<lamborghinimexico.com>, January 24, 2009,
<lamborghinichile.com>, July 19, 2008,
<lamborghinibrazil.com>, July 19, 2008,
<lamborghiniargentina.com>, July 19, 2008.
The Complainant states it was founded in the year 1963 by Ferrouccio Lamborghini and is the holding company for the Lamborghini Group. The Complainant has filed an extract of the Annual Report of AUDI AG Ingolstadt showing the figures of its group's revenue and its car production for the year 2009. The Complainant states it promotes its cars online from its interactive website, which it hosts at “www.lamborghini.com”.
The Complainant asserts its trademark LAMBORGHINI is internationally famous and has acquired secondary meaning. A Google search for the term Lamborghini returns 35,900,000 hits, the first thirty of which pertain to its cars. The Complainant states the disputed domain names are confusingly similar to its mark as each of the domain names uses its trademark with the name of a Latin American country. Users are likely to interpret the disputed domain names as a location related reference to the Complainant.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent is not licensed or authorized to use its mark or commonly known by the disputed domain names. The Respondent does not use it in connection with a bona fide offering of goods or service. The websites associated with the disputed domain names display the Complainant's trademarks and its emblem, giving an impression to users that the “please contact” button, will lead to the owner of the trademark, but the link generates an email to the Respondent.
The Complainant states the evidence shows the Respondent has connections with BMW, as the name and address of the Respondent's server is listed as NS.BMWCLUB.CL and NS1.BMWCLUB.CL. The Respondent owns NS.BMWCLUB.CL, which sells BMW spare parts and he is an executive of the BMW Club/Chile. Further, he uses the domain name <lamborghinichile.com> to promote a hotel that he manages. The Respondent is not using the disputed domain names for non-commercial fair use purposes.
The disputed domain names are registered and used in bad faith argues the Complainant, as the Respondent ought to have known of its well-known mark. He has registered the domain names to intentionally attract users to his website by creating a likelihood of confusion with the Complainant's mark and to prevent the Complainant from reflecting its mark in equivalent domain names. He has shown a pattern of such conduct by registering four such domain names and has used a disputed domain name to try and obtain a Lamborghini dealership in Chile. The Respondent has falsely pretended to order three of the Complainant's cars. He suppressed the fact that he owns other domain names with the Complainant's mark and is the president of the BMW Club Chile. The Complainant alleges the Respondent has failed to maintain requisite security, as a Turkish hacker has used the <lamborghinimexico.com> website for incendiary writing, and requests for the transfer of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
To obtain the remedy of transfer of the disputed domain name, the Policy stipulates that the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.
The first element requires the Complainant to prove that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has filed documents showing it has valid and subsisting registered trademark rights for its LAMBORGHINI mark in various jurisdictions. The Panel notes the Complainant's mark is widely known and the fame of its mark has been recognized in several previous cases such as: 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, Lamborghini Holding S.p.A v. Primal Ventures Inc., WIPO Case No. D2008-0548, Automobili Lamborghini Holding S.p.A v.Unity 4 Humanity Inc., WIPO Case No. DTV2008-0010, Automobili Lamborghini Holding S.p.A v. OneandOne Private Registration, and Jill Calangian, WIPO Case No. D2008-1443.
In the present dispute, all four of the disputed domain names, use the Complainant's LAMBORGHINI mark. Each domain name includes the name of one of these countries: Argentina, Brazil, Chile or Mexico along with the mark. The Panel finds the only difference between the disputed domain names and the LAMBORGHINI trademark is the addition of the name of a country.
The use of a geographic location such as the name of a country with a well-known trademark does not dispel the confusingly similar to the mark. See Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 (<hondaindia.com>). (The addition of a geographical suffix does not alter the underlying mark to which it is added). Also see Harrods Limited v. John Griffin, WIPO Case No. D2002-0641, where the geographic designation USA added to the HARRODS marks was found to add nothing distinctive as the emphasis remains on the trademark to attract the attention of Internet user.
The Panel finds the use of the trademark LAMBORGHINI with the name of a country in all the four disputed domain names is confusingly similar to the Complainant's trademark.
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, the Respondent may establish rights and legitimate interests in the domain names, if inter alia, any of these circumstances are found present: (i) before any notice of the dispute the Respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain names in connection with a bona fide offering of goods or services, or (ii) the Respondent as an individual, business or other organization has been commonly been known by the domain names, even if no trademark rights have been acquired by the Respondent, or (iii) the Respondent is making legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers.
The Respondent has not filed a response to refute the Complainant's contentions in these proceedings by submitting evidence that he is making bona fide offering of goods or services using the disputed domain names, or that he is commonly known by the disputed domain names or making legitimate non-commercial fair use of the domain names within the meaning of paragraph 4(c) of the Policy.
The Complainant has asserted that the Respondent has not been given any authorization to use the Complainant's trademark or its emblem. The Complainant's submissions are substantiated with evidence of its pre-dispute correspondence with the Respondent, where the Complainant has requested the Respondent to desist using its trademark and emblem. The Respondent in his reply has clearly stated he will not continue using the Complainant's marks. It can be inferred from this, that the Respondent does not have any authorization to use the Complainant's mark in any manner.
In the absence of any submissions from the Respondent, and on the basis of the current record and in particular, the correspondence between the parties, where the Respondent has admitted his lack of authorization to use the LAMBORGHINI trademark, the Panel finds that the Complainant has made a prima facie case of the Respondent's lack of rights or legitimate interests in the disputed domain names.
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain names were registered and are being used in bad faith by the Respondent.
The Complainant has argued that the disputed domain names were registered and are being used in bad faith as there are circumstances to indicate it was primarily registered for the purpose of selling, renting or otherwise transferring these disputed domain names to the owner of the mark for valuable consideration. The Complainant has filed documents to show that the Respondent has attempted using one of the disputed domain names as a bargaining chip to try and obtain a car dealership from the Complainant.
The Complainant's LAMBORGHINI trademark is well-known for its high performance luxury sports cars, and obtaining a dealership for its cars, the Complainant asserts, is of substantial value. The evidence on record shows the Respondent is an executive of the BMW Club/Chile and is therefore involved in the area of luxury sports cars, the same area of business as the Complainant. The print out of the website “www.bmwclub.cl”, shows the Respondent is named as its “Director”. The Respondent being in the business of luxury cars, in the Panel's view, make it is very likely that he was aware of the Complainant's LAMBORGHINI mark at the time of registration of the domain names. The Respondent was also probably aware of the value of a dealership for the Complainant's cars. Although there is no evidence of a direct offer to sell the disputed domain names, it can be inferred from the circumstances, that the Respondent has registered the disputed domain names to exploit the Complainant's mark, which constitutes bad faith registration of the disputed domain names under the Policy.
The Complainant has argued that the disputed domain names registered by the Respondent prevents it from reflecting its mark in corresponding domain names for the economically important Latin American countries and disrupts its business in this region. Further, the Respondent's registration of four domain names shows a pattern of conduct of registration of domain names. The Complainant has referred to the case of The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale, WIPO Case No. D2000-0378, where the registration of two domain names <universityofalberta.com> and<albertau.com>, was held as showing a pattern of conduct of domain name registrations.
In the Panel's view, it is improbable that the Respondent, who is a person doing business in the same industry as that of the Complainant, uses one of the well-known trademark of that industry along with the names of the countries in his region, without doing so in bad faith. It is reasonable to infer that the Respondent has registered the disputed domain names to disrupt in some way the trademark owners business or divert business to the Respondent. The Panel also accepts the Complainant's submissions that the Respondent has engaged in a pattern of behavior of registering domain names in bad faith by registering four domain names using its trademark.
The circumstances in the present case show the disputed domain names have been registered by the Respondent to intentionally attract users to his websites due to the likelihood of confusion with the Complainant's mark. The Panel finds the disputed domain names are registered for the trademark value of the Complainant's mark, which is recognized as bad faith use under paragraph 4(b)(iv) of the Policy. Capitalizing on the value inherent in the trademark is sufficient to show bad faith registration and use of the Respondent's domain names. See for instance Blue Cross and Blue Shield Association v. Igor Nikolenko, WIPO Case No. D2010-0037.
The Panel finds the Complainant has successfully established that the disputed domain names were registered and are being used in bad faith.
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 <lamborghiniargentina.com>, <lamborghinibrazil.com>, <lamborghinichile.com> and <lamborghinimexico.com> be transferred to the Complainant.
Dated: June 21, 2010