WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automobili Lamborghini Holding S.p.A., Audi AG, Volkswagen AG v. Joey Walt, globebizImports, Groupo Gold

Case No. D2011-1269

1. The Parties

1.1 The Complainants are Automobili Lamborghini Holding S.p.A. (“Lamborghini”), Audi AG (“Audi”), and Volkswagen AG (“Volkswagen”) of Ingolstadt, and Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Germany.

1.2 The Respondent is Joey Walt of San Marcos, California, United States of America, globebizImports of San Marcos, California, United States of America, and Groupo Gold of Via Monte, California, United States of America.

2. The Domain Names and Registrar

2.1 There are 60 domain names (referred to hereafter as the “Domain Names”) in issue in these proceedings. These are:

(i) <calabasaslamborghini.com>, <calabasaslamborghini.net>, <lamborghiniboutique.com>, <lamborghinicalabasas.net>, <lamborghinicollisioncenter.com>, <lamborghinicpo.com>, <lamborghinidealer.net>, <lamborghiniencino.com>, <lamborghinimalibu.com>, <lamborghininb.com>, <lamborghini-newportbeach.com>, <lamborghininewportbeach.com>, <lamborghini-oc.com>, <lamborghinioc.net>, <lamborghiniocrun.com>, <lamborghiniocservice.com>, <lamborghiniofcalabasas.com>, <lamborghiniofoc.com>, <lamborghinioforangecounty.com>, <lamborghinipalmsprings.com>, <lamborghinisantamonica.com>, <lamborghiniservicecenter.com>, <lamborghinisouthcounty.com>, <lamborghinitarzana.com>, <lamborghini4oc.com>, <nblamborghini.com>, <oclamborghiniclub.com>, <oclamborghinirun.com>, <oclamborghiniservice.com>, <newportbeachlamborghini.com> and <orangecountylamborghiniservice.com> (together the “Lamborghini Domains”);

(ii) <lamboblog.com>, <lamboboutique.com>, <lambocarclub.com>, <lambooc.com>, <lamboocservice.com>, <lamboocservice.net>, <lamboservice.com>, <lamboservice.net>, <lambo4oc.com>, <oclamboclub.com> and <oclambo.com> (together the “Lambo Domains”);

(iii) <audiah.com>, <audiirvine.com>, <audisouthcoast.com>, <auditustin.com>, <audi4me.com>, <audi4oc.com>, <southcoastaudi.com> and <truthaudi.com> (together the “Audi Domains”);

(iv) <commonwealthaudivw.com>, <commonwealthvwaudi.com>, <ocaudivw.com>, and <ocvwaudi.com> (together the “VW Audi Domains”);

(v) <commonwealthvolkswagen.com> and <volkswagen4me.com> (together the “Volkswagen Domains”); and

(vi) <orangecountyvw.com>, <vwinoc.com> and <vwofoc.com> (together the “VW Domains”),

2.2 All the Domain Names are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2011. On July 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 26 and July 29, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Domain Names were all registered in one of three names; i.e. “Joey Walt”, “globebizImports” and “Groupo Gold”, and provided contact details in each case.

3.2 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”).

3.3 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 August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2011.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 1, 2011. 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

4.1 There are three Complainants in this case. The first is Lamborghini. It is an Italian corporation with its principal office in Sant’ Agata Bolognese. It is the holding company of the Lamborghini group, which is the well-known manufacturer of sports cars and the successor in business to the original Lamborghini business founded by Ferruccio Lamborghini in 1963. Revenue for the Lamborghini group in 2011 amounted to EUR 227 million.

4.2 Lamborghini is the owner of various trade marks around the world that comprise or incorporate the word “Lamborghini”. They include:

(i) Community Trade Mark no 1098383 dated June 21, 2000 in classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37, and 41 for the word mark LAMBORGHINI; and

(ii) United States Registered trade mark no 74019105 dated November 13, 1990 in class 12 for the word mark LAMBORGHINI.

4.3 Lamborghini is also the owner of two registered trade marks for the word mark LAMBO. They are German trade mark no 307168611 in classes 7, 9 and 12 applied for on March 12, 2007 and Community Trade Mark no 6113451 in classes 7, 9 and 12 applied for on July 19, 2007.

4.4 The second Complainant is Audi. It is a German corporation with its principal office in Ingolstadt, Germany. It is a well-known car manufacturer with revenues in excess of EUR 35,000 million in 2010.

4.5 Audi is the owner of various trade marks around the world that comprise or incorporate the word “Audi”. They include Community Trade Mark no 18812 dated May 26, 1998 in classes 9, 12, 14, 16, 18, 20, 25, 27, 28, and 37 for the word mark AUDI.

4.6 The third Complainant is Volkswagen. It is a German corporation with its principal office in Wolfsburg, Germany. It is one of the world’s largest car manufacturers with revenues in excess of EUR 126,000 million in 2010.

4.7 Volkswagen is the owner of various trade marks around the world that comprise or incorporate the word “Volkswagen”. They include:

(i) Community Trade Mark no 703702 dated May 10, 1999 in classes 1 – 42 for the word mark VOLKSWAGEN; and

(ii) International Madrid Registration no 702679 dated July 2, 1998 in classes 1- 42 for the word mark VOLKSWAGEN, valid in a number of countries including the United States (with a filling date of December 23, 2003).

4.8 Volkswagen is also the owner of various trade marks around the world that comprise or incorporate the letters “VW”. They include:

(i) Community Trade Mark no 1354216 dated May 31, 2001 in classes 4, 7, 9, 12, 14, 16, 18, 25, 28, and 35 to 42 for the word mark VW;

(ii) International Madrid Registration no 708041 dated July 2, 1998 in classes 1- 42 valid in a number of countries including the United States (with a filling date of December 23, 2003) which takes the following form:

4.9 Each of the Complainants form part of the Volkswagen group. Lamborghini has been a wholly owned subsidiary of Audi since 1998 and Audi is a subsidiary of Volkswagen.

4.10 The identity and relationship of “Joey Walt”, “globebizImports” and “Groupo Gold” is discussed in greater detail later on in this Decision.

4.11 According to the publically available WhoIs data, the Domain Names were registered over a seven year period with the first two (i.e. <lamborghiniofoc.com> and <lamborghinioforangecounty.com>), being registered on March 20, 2002 and with the last seven (i.e. <oclamboclub.com>, <oclamborun.com>, <oclamborghiniclub.com> <oclamborghinirun.com>, <oclamborghiniservice.com> and <lamborghiniocrun.com>, <orangecountylamborghiniservice.com>) being registered on August 4, 2009.

4.12 The Domain Names have been used for various purposes. At the date of the Complaint the Domain Names appeared to fall into one of the following four categories:

(i) those which displayed a domain name pay-per-click page of some sort with various sponsored links;

(ii) those which displayed a place holder parking page headed “[Your Business Name]” and a serious of headings such as “Business Overview”, “Geographical Area” under which there appear to be uncomplete text fields. At the bottom of these pages also appears the text “If this is your Web site, you can customize your business profile from your account at Network Solutions®. Click here to edit your business profile”;

(iii) those which redirect Internet users to a website operating from the domain name <keuylian.com> advertising cookies, cakes and candies under the “sweetbake” name;

(iv) those that did not appear to host or redirect to an active website.

4.13 At Annex A to this decision is a table of the Domain Names, in which in respect of each Domain Name, there is, inter alia, recorded, the date of first registration, the names recorded in the WhoIs database for the registrant, administrative and technical contacts and the use (if any) being made of that Domain Name at the date of the Complaint. Unfortunately the Complaint has only provided evidence of one pay-per-click and one placeholder parking page use and although it has provided its own table setting out what use is being made of each domain name that table fails to distinguish between those two types of page. Accordingly, Annex A in most cases does not distinguish between these two uses. However if the pages currently in operation from the Domain Names at the date of this Decision are an accurate guide, approximately half of these domain are being used for pay-per-click use and half for the placeholder/ parking page.

4.14 The table at Annex A also records whether the email address “sossi@keuylianco.com” (the “Sossi Email Address”) has been used as a contact email address for the registrant, administrative or technical contacts. The significance of the existence of this email address is addressed in greater detail later on in this Decision.

5. Parties’ Contentions

A. Complainant

5.1 The Complainants contend that the facts of this case are such that it is entitled under the Policy to bring a single set of proceedings in relation to all the Domain Names, notwithstanding that there are three separate Complainants, four different types of marks relied upon and three different names are disclosed as the registrant in the WhoIs details for the Domain Names. It relies in this respect upon paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

5.2 Specifically, so far as the identity of the “Respondent” is concerned, the Complainants contend that the three names recorded as the registrants of the Domain Names are false and “all belong to one person or entity”. This is said to be a Mr. Viken Keuylian.

5.3 According to the Complainants, Mr. Keuylian was formerly an official Lamborghini dealer in southern California whose contract was terminated “due to serious problems concerning business conduct”. When that contract was terminated is not explained, but the Complainants refer to and provide copies of “press coverage” of these events. This takes the form of an article appearing on the website operating from the domain name <ferraris-online.com> which appears to carry a date of June 2009, and a piece appearing on the Wheels section of the New York Times website dated April 24, 2009.

5.4 According to these articles, Mr. Keuylian was the operator of the Lamborghini Orange County dealership which had shut its doors in November 2008. There are also references in these articles to Mr. Keylian pleading guilty to wire fraud in relation to his activities.

5.5 The Complainants also refer to two companies, Calabasas Euro Auto Group LLC and Platinum Motors LLC, which are said to be companies that belong to Mr. Keuylian and are said to have been “bankrupted”.

5.6 Reference is made in the Complaint to Automobili Lamborghini Holding S.p.A. v. Privacy, WIPO Case No. D2010-1075. This was another case under the Policy brought by Lamborghini in relation to five domain names that incorporated the term “Lamborghini”. The published decision in that case would suggest that the domain names were at least at some point registered in the name of Lamborghini dealerships that had ceased to trade and become insolvent. Presumably this is the same dealership as that of Mr. Keuylian, but (as is explained in greater detail later on in the Decision) this is not entirely clear. The Complainants also contend (although this is not otherwise evidenced) that the listed “administrative contact” for the domain names in that earlier case was “Sammy Walton”. This is the same name given as the “administrative contact” for “several” of the Domain Names in the present proceedings.

5.7 Further, in support of its contention that the Domain Names are owned or controlled by Mr. Keuylian the Complainants claim that:

(i) the Sossi Email Address is used for the Administrative and Technical contacts for the “majority” of the Domain Names, that “Sossi” is the name of the sister of Mr. Keuylian and that this email address is also listed as the technical contact for the “‘official domain’ of the Keuylian family under keuylian.com”;

(ii) “Joey Walt” is the registrant of the <keuylian.com> domain name (although this is not further evidenced) and that for “all [the Domain Names] Joey Walt appears either as Registrant or Administrative Contact or Technical Contact”;

(iii) the content of the websites operating from the Domain Names “speaks for the fact that all the websites belong to one entity”. In this respect, the Complainant’s refer to the fact that the website operating from the <keuylianco.com> is used for the same “sweetbake” website operating from many of the Domain Names;

(iv) material from the Internet Archive suggests that “some” of the domains in dispute were earlier redirected to Viken Keuylian’s main website under lamborghinioc.com”; and

(v) the Domain Names in these proceedings (and in the earlier WIPO Case No. D2010-1075) are “built according to a similar scheme”.

5.8 On the issue of confusing similarity the Complainants contend that the Domain Names represent the systematic registration of domain names that comprise one of the Complainants’ trade marks combined with a descriptive or geographical term. They claim that in most cases the additional term is geographic, giving as examples “Orange County”, “OC” or “Malibu”. In such circumstances, the Complainants assert that each of the Domain Names is confusingly similar to a trade mark of the Complainants and that “in all [the Domain Names the] Complainants’ trade[]marks are the only distinctive parts”.

5.9 On the issue of rights or legitimate interests the Complainants cite paragraph 2.1 of the WIPO Overview 2.0 and Do The Hustle LLC v Tropic Web, WIPO Case No. D2000-0624, which is said to be authority for the proposition that “once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent”.

5.10 The Complainants further contend that there has been no demonstrable preparations to use any of the Domain Names in connection with a bona fide offering of goods or services. Referring to the fact said to be already shown that “the disputed domains belong to a person connected to former contractual partners of Lamborghini” they go on to contend that “[e]ven if there had been a bona fide offering of goods or services in the past this would be irrelevant for the current dispute regarding the termination of the former dealer contract”. In this respect they cite the Automobili Lamborghini Holding S.p.A. case supra.

5.11 It is also asserted that each of the current uses of the Domain Names (i.e. in connection with the “sweetbake” website or pay-per-click or parking page use or with no connection to an active website) do not constitute use in connection with a bona fide offering of goods or services.

5.12 The Complainants further contend that the Respondent is not commonly known by any of the relevant trade marks and has not been authorised by the Complainants to use their trade marks. They assert “[t]o the contrary [the] Complainants would not authorize the Respondent to use [the] Complainants’ trade[]marks”.

5.13 Finally, the Complainants contend that there have been no noncommercial or fair use of any of the Domain Names.

5.14 On the issue of bad faith the Complainants contend that the Domain Names were registered in order to prevent the Complainant from reflecting their marks in a corresponding domain name. It claims that the “new official Lamborghini-dealer in Orange County actually uses the domain lambonb.com” and the implication of the Complaint appears to be that either this dealer or Lamborghini might prefer to use one of the domains the subject of these proceedings.

5.15 Further, the Complainants claim that the Respondent has registered domain names that correspond to trade marks for other sport cars. In this respect they refer to registrations for <beverlyhillslotus.com> and <lotuscalabasas.com> and provides WhoIs printouts that show both of these domain names to have been registered in the name of “Joey Walt”.

5.16 The Complainants also claim that the pay-per-click and parking and “sweetbake” uses of the Domain Names show that Respondent has registered the Domain Names to attract Internet users to those websites by creating a likelihood of confusion with the Complainants’ marks.

5.17 In this respect they assert:

“It also has to be taken into consideration that – before the websites where changed to ‘Sweetbake’ or parking pages – websites were redirected to lamborghinioc.com. The Panel in the precedent case [Automobili Lamborghini supra] decided that running websites of insolvent dealerships constituted registration and use in bad faith because this shows ‘the Respondent 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’.”

5.18 The Complainants also claim that the Domain Names were registered primarily for the purpose of disrupting the business of a competitor.

5.19 Finally, the Complainants assert that the following constitute further indications of bad faith:

(i) that the Respondent knew or ought to have known of the Complainants’ trade marks; and

(ii) that there has been the use of false contact information for the Domain Names and that the Respondent has thereby sought to conceal his true identity.

B. Respondent

5.20 The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal Response.

6.2 Notwithstanding that default, it remains incumbent on the Complainants to make out their case in all respects under paragraph 4(a) of the Policy. Namely the Complainants must prove that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and

(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 The Panel will address the three aspects of the Policy listed above in turn. However, before it does so it is necessary to address the Complainants’ contention that it is appropriate for this Decision to deal with all 60 of the Domain Names notwithstanding the fact that there are three Complainants in this case and prima facie the WhoIs details for the Domain Names suggest that there are three different registrants.

A. Multiple Complainants and Registrants

6.5 The Complainants contend that all 60 of the Domain Names can be dealt with in one set of proceedings in light of the comments at paragraph 4.16 of the WIPO Overview 2.0. This paragraph of the Overview states as follows:

“4.16 Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?

WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”

6.6. The issue of bringing proceedings against multiple respondents was also addressed by this Panel in Accor v. Jose Garcia, Jan Cerny, N/A, Dopici Nasrat, WIPO Case No. D2010-0471. In that case the Panel stated:

“4.2 The starting point is that normally it is not possible to commence a single UDRP proceeding in relation to domain names registered in the name of more than one person. Paragraph 3(c) of the Rules state that ‘The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder’, and although this is permissive rather than a proscriptive provision, the intent of the drafters of the Rules seems reasonably clear. So in a case where a complaint is filed against multiple unconnected respondents, a panel may continue that case against one of the respondents and dismiss it against the others (see for example The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132). [Footnote: ‘With respect to consolidation of multiple domain names and respondents under the Policy, where there is an element of connection and common control, see also the learned panellist discussion in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.’]

4.3 However, in considering whether there are multiple respondents, what is important is the identity of the registrants at the date that the complaint became ‘pending’. …

4.4 Further, if a panel considers that notwithstanding any change in registration details the relevant domain names are in fact controlled by the same person or persons, the proceedings can still continue (see, for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services PVT. LTD., Laksh Internet Solutions Private Limited., Pluto Domain Services Private LTD., Compsys Domain Solutions Private Limited, [ WIPO Case No. D2008-1675]’.”

6.7 Matters become even more complicated in cases where the identity of the registrants of a number of domain names is hidden prior to the commencement of proceedings behind a “privacy shield”. This was an issue that this Panel addressed in Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699 and RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987), WIPO Case No. D2010-0894. However, in the present case that complication does not arise as it would appear that no “privacy shield” was being used in respect of the Domain Names at the time of the Complaint.

6.8 Ultimately, the Panel has reached the conclusion that the Complainants are right when they assert that the Domain Names in this case are under common control. Further, notwithstanding the fact that the Domain Names were registered over a seven year period, the Panel is persuaded that these registrations all formed part of a general pattern of conduct on the part of the Respondent directed to the group of companies of which the Complainants form a part such that it would be both procedurally efficient and fair and equitable to all parties that the proceedings continue in relation to all 60 Domain Names.

6.9 On the issue of common control, the Complainants’ evidence in this respect is compelling. As has already been stated, at Annex A to this Decision is a table of all the Domain Names in these proceedings listed in chronological order by reference to the date of first registration. That table also identifies in the case of each Domain Name the names recorded in the WhoIs database for the registrant, administrative and technical contacts and the use (if any) being made of that Domain Name at the date of the Complaint. Finally, that table also records whether in respect of either the registrant, administrative or technical contacts the Sossi Email Address has been used.

6.10 From this table it can be seen that with one exception the Complainants are correct when they assert that “Joey Walt” is named as either the registrant or the administrative or technical contact for every one of these domain names. Further, the name “globebizImports” is used as the name of the registrant or the administrative or technical contact in the case of 47 of the 60 Domain Names. Further, the Sossi Email Address appears as a contact email for 28 of the Domain Names. This is not quite the “majority” of the Domain Names that the Complainants allege, but the point is that this common contact address is used for Domain Names registered in both the name of “Joey Walt” and “globebizImports”.

6.11 The Complainants also rely upon the similar nature of the material displayed from the websites operating from the Domain Names. Whether the fact that a large number of the Domain Names have been used in connection with pay-per-click service is significant is debatable. Further, the parking/ placeholder pages appear to be (as far as the Panel) can tell the standard parking page provided by the Registrar with an express reference to the Registrar in the text on that page. Therefore, the Panel does not accept that this is particularly significant. However, the Panel accepts the fact that a large number of Domain Names registered in the name of both “Joey Walt” and “globebizImports” divert internet users to the same “sweetbake” website advertising cookies, cakes and candies. That they should do so is highly suggestive of common control.

6.12 In conclusion, the Panel has little difficulty in concluding that that all of the Domain Names where either “Joey Walt” or “globebizImports” is identified as the registrant are in fact controlled by the same person.

6.13 That leaves the <lamborghinioc.net> Domain Name. Contrary to the Complainants’ assertions in the Complaint, “Joey Walt” is not named as either the registrant or the administrative or technical contact for that Domain Name. Further, this is not a Domain Name where the Sossi Email Address has been used. However, the Panel accepts that this is also under control of the same person or persons as the other Domain Names. The reasons for this are as follows.

6.14 First, there is the fact that it was registered on the same date as at least one other of the Domain Names. Second, there is the fact that it comprises the same combination of the terms “Lamborghini” and “oc” that is found in a number of the other Domain Names. Third (and again this is particularly compelling) is the fact that this Domain Name also diverts Internet users to the “sweetbake” website.

6.15 Further, the Panel also accepts that it is most likely that the actual identity of the person who controls the Domain Names is Mr. Keuylian (or at least someone closely connected with him) and that he can be treated as the underlying Respondent in respect of all of the Domain Names.

6.16 In coming to that conclusion the Panel accepts the Complainants contention in the absence of any evidence to the contrary that “Sossi” is the name of Mr. Keuylian’s sister. Further, it accepts the Complainants contention (supported by evidence from the Internet Archive) that at least one of the Domain Names (i.e. <lamborghiniboutique.com>) was used in 2008 to redirect Internet users to the website operating at that time from the <lamborghinioc.com> domain name used in connection with Mr. Keuylian’s distributorship. It also takes into account the use of the term “keuylian” as part of the Sossi Email Address. Last but not least there is the fact that the “sweetbake” website to which so many of the Domain Names redirect, operates from the <keuylianco.com> domain name.

6.17 The issue of common pattern of conduct is dealt with in greater detail under the bad faith heading of this Decision. But ultimately the Panel has reached the conclusion that the registrations all form part of a common course of conduct of registering domain names corresponding to marks in the Complainant’s group for purposes unconnected with any legitimate dealing in the Complainants products and with a view of taking unfair advantage of the reputation in the Complainants’ marks. That is more than adequate reason why it would be fair and equitable for the proceedings to continue in respect of all 60 Domain Names.

B. Identical or Confusingly Similar

6.18 What is meant by the words “confusingly similar” in paragraph 4(a)(i) of the Policy was addressed in some detail by this Panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (a case subsequently cited with approval in the WIPO Overview 2.0). In that case the Panel stated as follows:

“6.6 It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.

6.7 It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647). There are cases where a domain name combining the term “sucks” with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.

6.8 This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a Domain Name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name <[name of competitor]sucks.com> for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen.

6.9 It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names <theatre.com> or (to adopt American spelling) <theater.com> really confusingly similar to a mark for the word “heat”? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”

6.19 Bearing those comments in mind, it is noticeable that all of the Domain Names incorporate in their entirety at least one of the Complainant’s marks. This would suggest that the low threshold has been satisfied, but this is not a “hard and fast rule”. It is still necessary to consider each of the Domain Names in turn.

6.20 Doing this it is clear that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in the case of all of the Lamborghini Domains and the Volkswagen Domains. Each of these Domain Names can only sensibly be read as either the terms “Lamborghini” or “Volkswagen” with other descriptive or generic text.

6.21 This is also true of most of the Lambo Domains and the Audi Domains names. However, in the case of some of these Domain Names, such as <audiah.com>, <lambooc.com> and <oclambo.com>, although these domain names can be read as including a reference to one of the Complainant’s marks, that reference is far from immediately obvious. This is also so of some of the VW Audi Domains (for example, <ocaudivw.com>).

6.22 In the case of the VW Domain Names, the issue is even more pronounced. <orangecountyvw.com> can most sensibly be read as the terms “orange”, “county” and “vw” in combination. However, <vwinoc.com> and <vwofoc.com> are more problematic. Presumably the Complainants contend that these domain names should be read as “VW in OC” and “VW of OC” where “OC” represents Orange County, but this is far from obvious.

6.23 Nevertheless, the Panel concludes that the test of confusing similarity has been made out in all of these cases. It accepts that each of the Domain Names is capable of being sensibly read as referring to the Complainants’ marks. Significantly, there is also no sensible or plausible alternate reading of these Domain Names that has been put before the Panel that does not include a reference to the Complainants’ marks.

6.24 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

6.25 The question of rights or legitimate interests can be dealt with relatively succinctly notwithstanding the large number of Domain Names in issue. In short the Panel finds that as at the date of the Complaint the Respondent had no right or legitimate interest in any of the Domain Names.

6.26 Most of the Domain Names clearly make a reference to the Complainant’s marks and even in those cases where that reference is not so clear, there is no obvious other use of those terms that does not include such a reference.

6.27 Further, none of the Domain Names are being used in a way that involves a bona fide offering of goods and service in respect of which the Domain Names might be sensibly associated. Whatever may have been the case in the past neither the Respondent, nor any company with which the Respondent is associated with, any longer deals in any products of the Complainants and the Domain Names are not being used to promote any genuine dealership.

6.28 The Domain Names are instead being used in one of three ways. The first is to promote cookies, cakes and candies with which none of the Domain Names have any obvious association. This does not provide a right or legitimate interest.

6.29 The second is for the purpose of pay-per-click advertising. This is not pay-per-click advertising reliant upon the generic meaning of words that might arguable provide a legitimate interest (see paragraph 2.6 of the WIPO Overview 2.0). For the reasons addressed under the heading of bad faith below it is instead pay-per-click advertising the effectiveness of which trades off the reputation of the Complainant’s marks. Not only does that not provide any right or legitimate interest, it positively provides evidence that no such right exists (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).

6.30 The third is that the Domain Names are merely being held by their owner. In some case there is a plain placeholder page displayed from the Domain Name and in others no page is displayed from the Domain Name at all. Again as is addressed in greater detail under the heading of bad faith below, there is no obvious legitimate use of these Domain Names and the most likely explanation is that they are being held with a view in the future to unfairly trade in some manner off the reputation of the Complainants’ marks. Accordingly, the Respondent has no right or legitimate interest in relation to these Domain Names.

6.31 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

6.32 There is little doubt that there has been bad faith use of all the Domain Names. The Panel accepts that all the Domain Names either clearly refer to marks in which the Complainants’ hold rights or at least the only sensible reading of these Domain Names is as containing a reference to these marks.

6.33 Further, if (as the Panel has accepted), the Domain Names are under the control of Mr. Keuylian (or at least someone closely connected with him), Mr. Keuylian’s previous associations with the Complainants make it clear that he has full knowledge of the Complainant’s marks.

6.34 Further, a large number of those Domain Names are being used in a manner that takes unfair advantage of the Complainants’ rights. First, there is the use of Domain Names to divert Internet users to the “sweetbake” website. There is no legitimate explanation for that diversion and the Panel finds that this constitutes activity that falls within the scope of the example of circumstances evidencing bad faith set out in paragraph 4(b)(iv) of the Policy; i.e. [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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.

6.35 Second there is the use of Domain Names to divert Internet users to pay-per-click pages. In many cases the reference to the Complainants’ marks in the body of the Domain Name is clearly apparent and in those where it is less clear there is no other sensible reading of the Domain Name. Further although it would been helpful if the Complainants had provided more direct evidence in this respect, the Panel accepts that the links displayed on the pay-per-click pages are associated the Complainants and its competitors. Ultimately, when this is looked at a whole it is clear that the Respondent is seeking by means of this pay-per-click use to unfairly trade of the reputation of the Complainants’ marks and such use again that falls within paragraph 4(b)(iv) of the Policy (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

6.36 That leaves the Domain Names where the domain name either displays the generic “Business Name” parking page and those Domain Names that do not resolve to any particular website. However the Respondent’s use of the other Domain Names and the fact that it is hard to conceive of a legitimate current use of these remaining Domain Names (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455 and La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377) inevitably leads to the conclusion that the Respondent is holding these domain names with the intention of using them in future in some manner to take unfair advantage of the Complainants’ rights. This is sufficient for a finding of bad faith use.

6.37 However, the Complainants must also show bad faith registration. From the material that the Complainants have provided it is clear that any Lamborghini distributorship with which Mr. Keuylian was associated came to an end in November 2008. With this in mind the Panel accepts that from that date the Respondent could have not have not had a valid reason for registering any Domain Names after that date. However, it can be seen from Annex A that more than half of the Domain Names were registered prior to that date.

6.38 That in turn raises the question to what extent prior to that date the Respondent may have legitimately (whether with the consent of the Complainants or perhaps otherwise) registered these Domain Names in connection with his distributorship. On this issue what is generally a competently constructed Complaint, becomes muddled and vague. In particular:

(i) at one stage Mr Keuylian is described unequivocally as an official dealer, but later on he is instead described as “connected to former contractual partners of Lamborghini”. Which is correct and it is the later statement, who are these contractual partners? Are they Calabasas Euro Auto Group LLC and / or Platinum Motors, LLC, i.e. the two companies said to belong to Mr. Keuylian that subsequently are said to have been “bankrupted”? The reference in the Complaint to the previous Automobili Lamborghini case supra would suggest that the underlying facts surrounding registration in that case were analogous or identical to those that apply here. However, the Complainants do not definitively state this and a reading of that decision does not help (there is for example, no reference in that decision either to Mr. Keuylian or the names of the alleged insolvent companies). Indeed, there is text in this decision which suggests that there may have been a transfer of the domain names from a previous distributorship into the name of the respondent. No such claim is made in the present case.

(ii) regardless of who or what legal entity was the previous official Lamborghini dealer, to what extent did the Complainants consent to the registration of domain names that included their marks? There is the following cryptic phrase in the Complaint in this respect:

“Respondent is not a licensee of the Complainant and no consent has been granted by Complainant to Respondent to use or exploit its trademarks “Lamborghini”, “Lambo”, “Volkswagen”, “VW” and “Audi”. To the contrary Complainants would not authorize the Respondent to use Complainants’ trademarks.”

Presumably the first part of this statement would be false if the Respondent was a distributor. So is the point that the Complainant is trying to make here that the Respondent was not a distributor or (and this appears more likely) that no licence was granted to use the marks to that distributor for the purpose of use in any domain name. Further the statement that the Complainant “would not authorize the Respondent to use Complainants’ trademarks” raises as many questions as it answers. It suggests that there was some discussion about the registration of domain names that incorporated at least some of the marks of the Complainants and yet no further reference or description of any such discussion is to be found elsewhere in the Complaint.

6.39 This is less than ideal. Nevertheless, ultimately the Panel has formed the view that this lack of clarity does not matter in this case and that it can proceed to make a finding in favour of the Complainants without seeking any further clarification.

6.40 There are a number of reasons for this. First, if the Respondent contends that the registration was pursuant to some distributorship or with the consent of the Complainants, one would expect the Respondent to raise this. Second, it is hard to see why even a legitimate Lamborghini distributor might legitimately register domain names incorporating the terms “Audi”, “VW” and “Volkswagen” (and there are examples of each prior to November 2008). Third, and perhaps the most compelling, is the fact that regardless of who was the distributor and the extent to which that distributor had the right to use the Complainants’ names, it is simply not credible that such a distributor or reseller believing that it has a genuine right to use certain marks in domain names would proceed to do so behind a series of aliases such as Joey Walt, globebizImports and Groupo Gold.

6.41 These facts when combined with the clear bad faith registrations after November 2008 leads the Panel to conclude that all registrations prior to that date were also in bad faith. The Panel is also led to the conclusion on the balance of probabilities that these registrations whenever they were made were part of a pattern of conduct whereby the Registrant sought to take advantage of the reputation of the Complainants’ marks quite separately from any distributorship. That conclusion is also supported to some degree by the registration of the “lotus” related domain names to which the Complainants refer, which cover both the period before and after any dealership came to an end.

6.42 In the circumstances, the Complainants has made out the requirements of paragraph 4(a)(iii) of the Policy.

E. Remedies

6.43 The Complainants have requested that all the Domain Names in this case be transferred to “Complainant 1” i.e. Lamborghini. This is so notwithstanding that a significant number of the Domain Names do not relate to the LAMBORGHINI or LAMBHO marks owned by Lamborghini. It may be that this is just a matter of administrative convenience for the Complainant. The Panel also accepts that where different complainants that are all party to a single set of proceedings agree, there is some force in the argument that they ought to be able to ask for the domain names to be transferred to whatever entity they wish.

6.44 Nevertheless, the Panel is unaware of any reasoned authority to this effect. Further, there is an obvious logic in the position that a specific complainant should only be entitled to ask for transfer to it of domain names that relate to marks in which it has an interest. Thereafter the successful complainant can do with the mark what it wishes. Further, the Panel notes that this is a stance that a previous panel adopted (albeit one assumes at the request of the relevant parties) when dealing with cases involving multiple complaints relying upon different marks in Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331. In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 it appears that the panel may have taken a somewhat different approach, but it is not clear from the decision of the case exactly which marks resided with which entities.

6.45 In the circumstances, the Panel has decided to take the more cautious approach of ordering the transfer of the Lambo Domains and Lamborghini Domains to Lambourghini, the Volkswagen and VW Domains to Volkswagen and the Audi Domains to Audi. That still leaves the VW Audi Domains which incorporate the marks of more than one Complainant. As such these domain names can be transferred to either rights holder with the consent of the other (see for example paragraphs 6.72 to 6.79 of Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED., WIPO Case No. D2008-1675). The Panel believes that consent can be assumed in this case given the identity and relationship of the relevant parties. In the absence of an expressed preference it will order the transfer of those domain names to Volkswagen, which is also the parent company of Audi.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that:

(i) <lamboblog.com>, <lamboboutique.com>, <lambocarclub.com>, <lambooc.com>, <lamboocservice.com>, <lamboocservice.net>, <lamboservice.com>, <lamboservice.net>, <lambo4oc.com>, <oclamboclub.com>, <oclambo.com>, <calabasaslamborghini.com>, <calabasaslamborghini.net>, <lamborghiniboutique.com>, <lamborghinicalabasas.net>, <lamborghinicollisioncenter.com>, <lamborghinicpo.com>, <lamborghinidealer.net>, <lamborghiniencino.com>, <lamborghinimalibu.com>, <lamborghininb.com>, <lamborghini-newportbeach.com>, <lamborghininewportbeach.com>, <lamborghini-oc.com>, <lamborghinioc.net>, <lamborghiniocrun.com>, <lamborghiniocservice.com>, <lamborghiniofcalabasas.com>, <lamborghiniofoc.com>, <lamborghinioforangecounty.com>, <lamborghinipalmsprings.com>, <lamborghinisantamonica.com>, <lamborghiniservicecenter.com>, <lamborghinisouthcounty.com>, <lamborghinitarzana.com>, <lamborghini4oc.com>, <nblamborghini.com>, <oclamborghiniclub.com>, <oclamborghinirun.com>, <oclamborghiniservice.com>, <newportbeachlamborghini.com>, and <orangecountylamborghiniservice.com> be transferred to Automobili Lamborghini Holding S.p.A.;

(ii) <audiah.com>, <audiirvine.com>, <audisouthcoast.com>, <auditustin.com>, <audi4me.com>, <audi4oc.com>, <southcoastaudi.com> and <truthaudi.com> be transferred to Audi AG; and

(iii) <commonwealthaudivw.com>, <commonwealthvwaudi.com>, <ocaudivw.com>, <ocvwaudi.com>, <commonwealthvolkswagen.com>, <volkswagen4me.com>, <orangecountyvw.com>, <vwinoc.com> and <vwofoc.com> be transferred to Volkswagen AG

Matthew S. Harris
Sole Panelist
Dated: September 7, 2011

Annex A