WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobili Lamborghini Holding S.p.A. v. Privacy
Case No. D2010-1075
1. The Parties
The Complainant is Automobili Lamborghini Holding S.p.A. of Bolognese, Italy and Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Privacy of Long Beach, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <automobililamborghini.com>, <lamborghinicalabasas.com>, <lamborghinioc.com>, <lamborghiniocevents.com>, and <lamborghiniorangecounty.com> are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 30, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On June 30, and July 1, 2010, Network Solutions, LLC transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 12, 2010. The Center verified that the Complaint together with the amendment to 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 July 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2010. On July 29, 2010, the Respondent requested an extension of time to file its Response. In accordance with paragraph 5(d) of the Rules, the due date for Response was extended to August 9, 2010. The Respondent did not submit any response by the specified date. Accordingly, the Center notified the Respondent’s default on August 11, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 17, 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.
4. Factual Background
The Complainant is an Italian manufacturer of high performance sports cars, founded in 1963 and now a wholly owned subsidiary of German car manufacturer Audi AG. Vehicles built by the Complainant are marketed under the name LAMBORGHINI and are among the world's most famous luxury sports cars. The Complainant’s 2009 results show group revenue of €227 million from a production level of 1,515 cars. The Complainant maintains a complement of 1,000 employees. The Complainant is the owner of an extensive global portfolio of registered trademarks for the word LAMBORGHINI including United States trademark No. 1149229, registered March 24, 1981 in international classes 14, 16, 18 and 25, and United States trademark No. 1622382, registered November 13, 1990 in international class 12.
The disputed domain names were registered as follows:
<automobililamborghini.com> - July 20, 1998.
<lamborghinicalabasas.com> - December 20, 2006;
<lamborghinioc.com> - March 20, 2002;
<lamborghiniocevents.com> - May 1, 2007; and
<lamborghiniorangecounty.com> - March 20, 2002.
As at the date of filing of the Complaint, the disputed domain names were pointing to the following websites:
<automobililamborghini.com> - automatically redirected to lamborghinioc.com.
<lamborghinicalabasas.com> - website displaying only the text “Lamborghini Calabasas authorized dealer, Authorized Dealer Automobili Lamborghini” along with the Complainant’s crest, the “Lamborghini Bull”;
<lamborghinioc.com> - Lamborghini Orange County authorized dealer site;
<lamborghiniocevents.com> - sub-page of lamborghinioc.com requiring completion of an online form; and
<lamborghiniorangecounty.com> - Lamborghini Orange County authorized dealer site.
As at the date of this Decision the disputed domain names were pointing to the following websites:
<automobililamborghini.com> - site displaying vehicle related sponsored listings.
<lamborghinicalabasas.com> - site displaying vehicle related sponsored listings;
<lamborghinioc.com> - business profile template provided by registrar;
<lamborghiniocevents.com> - site displaying vehicle related sponsored listings; and
<lamborghiniorangecounty.com> - business profile template provided by registrar.
5. Parties’ Contentions
The domain name <automobililamborghini.com> consists of the first part of complainant’s name and is identical to the name of Complainant’s wholly-owned subsidiary Automobili Lamborghini S.p.A. All four other disputed domain names combine the Complainant’s famous trademark with a geographical term designating a county (Orange County) or city (Calabasas) in South California. OC is a common abbreviation for Orange County.
The conjunction of a location to a famous trademark does not render the domain name different from the trademark. The Internet user interprets such domain names as location related references to the Complainant or its products.
No preparations to use the domain names in connection with a bona fide offering of goods or services are cognizable. Emblems or products of the Complainant are displayed on all five disputed domains. The Respondent is neither a licensee nor a business partner of the Complainant. The websites to which the disputed domain names point belonged to companies which ceased to operate due to bankruptcy. The Complainant has had contractual relations with these but all Lamborghini Dealer Agreements between the insolvent companies and the Complainant have been terminated. The Respondent has somehow obtained the source codes of the websites out of the bankruptcy estate. It is likely that the disputed domain names were formerly held by the insolvent companies. The Respondent cannot derive any rights from the remains of the websites which have been used by the former holder of the domain names. It follows from the above that the websites available at the disputed domain names pretend to be related to authorized dealers of Complainant’s cars.
The Respondent does not use the disputed domain names in a fair and noncommercial manner. The use of the domain names has misleadingly diverted customers to the websites which simulate the web page of an authorized dealer of Complainant’s products. The Complainant’s former authorized dealer in Orange County was one of the largest Lamborghini dealers in the world. Therefore the dealership in Orange County is of great importance for the Complainant. <lamborghinicalabasas.com>, <lamborghiniorangecounty.com> and <lamborghinoc.com> are intuitive choices to try on the Internet if customers are looking for an authorized Lamborghini dealer in the respective region. The Complainant is prevented from using these domain names for its own purposes, especially from using the domain names for region specific information about its products or an authorized dealer in the designated counties.
The Respondent is inter alia the registrant of the domain names <LotusCalabasas.com>, <LotusOfOrangeCounty.com>, <OrangecountyVW.com> and <CWAudi.com>, demonstrating that the Respondent follows a pattern of conduct to register domain names that consist in their distinguishing part of famous car manufacturer's trademarks.
The Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor. The bankruptcy of the former dealers created significant public interest. It is in the Complainant’s reasonable interest to prevent any misperception about the former dealerships. LAMBORGHINI has been constantly and highly promoted for decades and is therefore known to the Respondent. The Respondent had actual and constructive knowledge of the trademarks of the Complainant when it acquired the domain names. The registration of a domain name that is identical to a famous trademark without authorization is in itself evidence of bad faith.
On June 29, 2010 the Complaint was submitted by email to the Respondent according to the Rules. On the same day – presumably after receipt of the email – the Respondent changed the Registrant’s name, address and contact details of all five disputed domain names into a privacy account provided by Network Solutions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided extensive evidence of its rights in the registered trademark LAMBORGHINI. Each of the disputed domain names incorporates this mark in its entirety along with descriptive modifiers. In three of the disputed domain names the modifiers are purely geographic descriptors, namely Calabasas, Orange County and OC. In the case of OC, the Panel accepts the Complainant’s contention that this is intended to refer to Orange County. The modifiers in the remaining two disputed domain names are OC events and automobili. These are similarly descriptive. In all of the disputed domain names the dominant element is the Complainant’s trademark LAMBORGHINI which is both distinctive and widely known. It is well recognized in previous cases under the Policy that where such a mark is incorporated in its entirety within a domain name, the addition of one or more generic words will not distinguish that domain name from the mark (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). In all of these circumstances, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 non-commercial 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent. In the present case, the Complainant notes that it has given no permission to the Respondent to use its LAMBORGHINI trademark. The Complainant has also provided evidence which indicates that the Respondent has somehow obtained the disputed domain names and associated websites from bankrupt estates and that it continued to make use of the content of the former websites until it received the present Complaint, after which the majority of the disputed domain names were pointed to websites featuring vehicle-related sponsored advertising links and the WhoIs of each of the disputed domain names was transferred to an anonymous privacy service.
The Complainant notes that the disputed domain names were originally registered to Lamborghini dealerships which have ceased to trade and have become insolvent. Prior to their insolvency such dealerships may or may not have been in a position to claim rights or legitimate interests in the disputed domain names, based upon the tests established for the legitimate interests of a reseller in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nevertheless, the Panel agrees with the Complainant’s submission that the Respondent is not such a reseller and that it is not entitled to inherit or acquire any rights or legitimate interests which may have been possessed by the former registrant of the disputed domain names.
In all of these circumstances, the Panel is satisfied that the Complainant has put forward sufficient evidence to constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions provides: “Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Respondent has not filed any response in the present case. There is nothing in the Respondent’s various communications with the Center which indicate the nature of any rights or legitimate interests which the Respondent might seek to claim in any of the disputed domain names. Furthermore, in light of the clear evidence produced by the Complainant and the conduct of the Respondent after its receipt of the Complaint, the Panel cannot conceive of any possible legitimate interest or rights that the Respondent could maintain in the disputed domain names.
Accordingly the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present case, the Panel is satisfied that the acquisition of the disputed domain names by the Respondent and their use initially for facsimiles of the websites of insolvent Lamborghini dealerships and (in the case of the majority of the disputed domain names) subsequently for publication of vehicle-related sponsored advertising hyperlinks constitutes registration and use in bad faith. In the Panel’s view, the Respondent has intentionally attempted to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of the Respondent’s website, as contemplated by paragraph 4(b)(iv) of the Policy. The Panel is fortified in this view by the fact that the Respondent has also engaged in this activity with regard to other well-known trademarks in the automotive industry. In particular, the website at “www.LotusOfOrangeCounty.com” also displays sponsored advertising.
While it is not immediately clear whether the Respondent’s former use of the disputed domain names had any express commercial purpose behind it, the Panel is satisfied that it was highly misleading to Internet users and that it was the Respondent’s intent in republishing the original website content of the Complainant’s former dealerships that confusion would result. The subsequent publication of vehicle-related sponsored links, many of which refer to the Complainant’s competitors, is clearly commercial in nature.
The Complainant has also made a compelling case that the Respondent’s acquisition and use of the disputed domain names is likely to cause considerable disruption to the Complainant’s business. While this may not have been the Respondent’s primary intent, the Panel is satisfied that the Respondent was targeting the Complainant’s business in acquiring the disputed domain names and that the Respondent must have been well aware that this would be the likely effect of its republishing of the content of the former Lamborghini dealerships. This, in the Panel’s view, is a further indicator of registration and use in bad faith. It is worth noting that while these circumstances do not fit squarely into the wording of paragraph 4(b)(ii) of the Policy (there is no evidence, for example, that the Respondent is a competitor of the Complainant), the circumstances set out in paragraph 4(b) are clearly expressed to be non-exclusive in nature and that other circumstances may likewise constitute indicators of bad faith under the Policy.
Accordingly the third element under the Policy has been established.
D. Extension of Time to File Response
The Respondent has requested an extension of time to file a response on two occasions following the filing of the Complaint. Paragraph 5(d) of the Rules provides:
(d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.
Paragraph 10(c) of the Rules provides:
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
Before commenting on the Respondent’s requests it is instructive to review the timeline in this particular administrative proceeding. The Complaint was first transmitted to the Respondent by email from the Complainant’s representatives to the email address on the WhoIs for the disputed domain names on June 29, 2010. The Complainant notes that there was no indication from its email systems of any delivery failure. On the contrary, the Complainant has also provided evidence that on the same date, and shortly after the Complaint was transmitted, the WhoIs on the disputed domain names was changed. It is reasonable for the Panel to infer that this change was no coincidence and that it is a clear indication that the Respondent received the Complaint on that date.
As the WhoIs had changed prior to registrar verification, the Complainant filed an amended Complaint which was notified to the Respondent on July 13, 2010 by email to the addresses for the Respondent listed in the registrar’s verification response. A confirmation of successful delivery to one of these email addresses was received by the Center’s systems on the same date, presumably upon acknowledgement from the recipient email server. Also on July 13, 2010, the Center sent a written notice to the Respondent’s postal address intimating that the Complaint had been notified by email. The courier’s records show that this communication was successfully delivered to the Respondent’s address on July 15, 2010. On July 29, 2010, the Respondent made its first request for an extension of time to file a response. The requested extension was for the period to September 20, 2010.
The Center decided to grant a brief extension to the Respondent until August 9, 2010 and the Respondent was advised of this on August 4, 2010. The Respondent replied to the Center on the same date that its counsel was dealing with a sudden and tragic death in the family and the Respondent therefore requested a further extension of time to August 17, 2010. The Center informed the Respondent that this request would be placed before the Panel.
In light of the above it can be seen that the Complaint has been in the Respondent’s hands from June 29, 2010, a total period of almost sixty days. The Respondent has been in a position to instruct counsel since it received the Complaint and, more particularly, from and after July 13, 2010 when the Complaint was formally notified by the Center. Although the Respondent had already received the benefit of the period between July 13 and August 2, 2010 to file a response it was also provided with an extension of time by the Center to August 9, 2010. Nevertheless, the Respondent failed to file a response by that date and neither the Respondent nor its counsel (who is not named in any of the Respondent’s communications with the Center) have attempted to file a late response at any point.
The panel in Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, WIPO Case No. D2008-1234, noted “The Policy and the Rules are intended to facilitate expeditious consideration of a limited class of cases, and strict adherence to their deadlines is a necessary corollary of this objective. The Knot, Inc. v. Julia Bitton, The Nest, WIPO Case No. D2006-0377. Both this objective and this rule of decision are or should be well known after almost a decade of reported Policy decisions.” Furthermore, the panel in World Wrestling Entertainment Inc. v. Israel Joffe, WIPO Case No. D2010-0860, stated that “Any extension not based upon legitimate and appropriately supported need cannot, in this Panel's opinion, constitute the “exceptional” circumstances called for by paragraph 5 of the Rules.” The Panel in the present case endorses both of these statements.
It should be noted that the Respondent entirely failed to provide any support for its initial request for an extension. The period requested would have amounted to more than three times the usual twenty days provided in the Rules. The Respondent alleged that it had not received notification of the Complaint with sufficient time to allow it to prepare a response despite the fact that (1) it appears to have taken immediate steps to amend its registration details as a direct consequence of the transmission of the Complaint to it by the Complainant on June 29, 2010 and (2) the Center received a confirmation of successful delivery of the notification of the Complaint to the Respondent’s email address on July 13, 2010.
The Panel is next presented with the apparent sudden lack of availability of the Respondent’s counsel whom the Respondent states has had a death in the family. The Respondent does not name this counsel, nor has the situation been independently confirmed to the Center, for example by the office of the representative concerned. In light of the manner in which the Respondent’s original request for extension was made, and in particular the Respondent’s failure to provide any supporting information whatsoever with either of its requests, the Panel is forced to conclude that, more likely than not, these constitute a disingenuous attempt to continue to retain control of the disputed domain names for as long as possible. Were this not so, the Panel would have expected the Respondent’s counsel to have been in contact with the Center well before the date of this Decision which, it should be noted, post-dates August 17 (the date proposed by the Respondent for a further extension of time) by more than a week. No attempt has been made to file a late response and no indication has been given by the Respondent in any of its correspondence, however informally, of the nature of its case.
In any event, even if the position regarding the Respondent’s counsel is as asserted by the Respondent, the Panel’s opinion is that more than adequate notice has been provided to allow the Respondent to state its case in the circumstances outlined above.
Accordingly, the Panel denies the Respondent’s request for a further extension of time in which to file a response.
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, <automobililamborghini.com>, <lamborghinicalabasas.com>, <lamborghinioc.com>, <lamborghiniocevents.com>, and <lamborghiniorangecounty.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: August 26, 2010