Decision for dispute CAC-UDRP-107691

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the following trademarks:

1. EU word trademark LAMBORGHINI, no. 001098383, with the priority date of 8 March 1999, registered in classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37 and 41;
2. US word trademark LAMBORGHINI, no. 74019105, with the priority date of 16 January 1990, registered in class 12;
3. International word trademark LAMBORGHINI, no. 460178, with the priority date of 28 March 1981, registered in classes 3, 4, 9, 12, 14, 16, 18, 25, 28 and 34; and
4. International word trademark LAMBORGHINI, no. 959504, with the priority date of 28 February 2008, registered in classes 12 and 28.

(“Complainant’s Trademarks”)

The disputed domain name was registered on 6 December 2021.

As the Respondent did not file any response to the complaint, the Panel took into account the following facts asserted by the Complainant (and supported by the documentary evidence submitted by the Complainant) and unchallenged by the Respondent:

1. The Complainant is an Italian manufacturer of high-performance sports cars based in Sant'Agata Bolognese, Italy. The company was founded in 1963 by Ferruccio Lamborghini as Automobili Ferruccio Lamborghini. The vehicles of the Complainant belong to the world’s most famous luxury sports cars. The Complainant’s group promotes Lamborghini cars in different languages worldwide on the internet, inter alia at www.lamborghini.com;
2. The Complainant is the owner of the Complainant’s Trademarks which are well-known trademarks enjoying strong reputation worldwide; and 
3. There is a website under the disputed domain name offering rental of luxury cars in the city of Dubai, including those of the Complainant, however, some other car brands are also offered for rental at such website, including Ferrari, Mercedes, BMW and Audi. The website does not contain any information as to its relationship with the Complainant as the owner of Complainant's Trademarks.

THE COMPLAINANT:

In addition to the above stated factual assertions, the Complainant also contends the following:

1. The disputed domain name is confusingly similar to Complainant’s Trademarks as it includes the Complainant's Trademarks in their entirety and addition of a generic term “rent” and geographic term "dubai" to the disputed domain name cannot diminish confusing similarity;

2. There disputed domain name has not been used by the Respondent in connection with a bona fide offering of goods or services. Although the Respondent appears to have been providing rental services of Complainant's cars, the website under the disputed domain name fails to meet the requirements of Oki Data test as established in the WIPO Case No. D2001-0903 Oki Data Americas, Inc. v. ASD, Inc., <okidataparts.com> as it does not disclose its relationship with the Complainant and vehicles of other brands are offered for rental at such website. Respondent is not commonly known by “Lamborghini”, “rent”, “Dubai” or “lamborghinirentdubai”. No permission to use Complainant's Trademarks was granted by the Complainant to the Respondent. Therefore, the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and

3. Complainant’s use of its trademarks and business activities as a world-famous car manufacturer predates the registration of the disputed domain name by decades. Respondent obviously had actual knowledge of Complainant´s trademarks when acquiring the disputed domain name as he aims to attract owners of Complainant’s cars. The conclusion of Respondents prior knowledge of Complainant’s trademarks is supported by the fame and distinctiveness of Complainant´s Trademarks. By registration and use of the disputed domain name the Respondent has intentionally attempted to attract users for commercial gain, by creating a likelihood of confusion with the Complainant's Trademarks. As a result, the disputed domain name has been registered and is being used in bad faith by the Respondent.

For these reasons the Complainant believes that it satisfies all requirements under the Uniform Domain Name Dispute Resolution Policy ("UDRP" or "Policy") for transfer of the disputed domain name to the Complainant.

THE RESPONDENT

The Respondent did not provide any response to the complaint.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

For details, please see "Principal Reasons for the Decision".

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

For details, please see "Principal Reasons for the Decision".

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

For details, please see "Principal Reasons for the Decision".

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 has been registered and is being used in bad faith.

The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.

RIGHTS

The disputed domain name is confusingly similar to Complainant’s Trademarks. In includes such trademarks in their entirety and then a descriptive term "rent" and geographic term "dubai" is added. Addition of such non-distinctive terms does not diminish confusing similarity of the disputed domain name to Complainant’s Trademarks.

For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".com") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel concludes that the Complainant satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (please see, for example, WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd. <croatiaairlines.com>).

Under the disputed domain name there is a website apparently offering rental of luxury cars in the city of Dubai, including those of the Complainant. Under a long-established practice in domain name disputes, a business legitimately dealing in the goods or services of certain brand (such as reseller, distributor or service provider), may have legitimate interest to use the name of such brand in a domain name. However, there are certain important obligations which such business has to meet. These obligations were outlined in the WIPO Case No. D2001-0903 Oki Data Americas, Inc. v. ASD, Inc., <okidataparts.com> (the so called "Oki Data test") and are the following:

(i) the business must actually be offering the goods or services at issue;

(ii) the business must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the relationship with the trademark holder; and

(iv) the business must not try to “corner the market” in domain names that reflect the trademark in question.

The website under the disputed domain name offers rental of Complainant's cars which appears to be a legitimate business undertaking. However, the Respondent failed to disclose its relationship to the Complainant, in particular, no reference is being made to unauthorized status of the Respondent. Therefore, the Respondent failed to meet the requirement under point (iii) above. Also, at such website, the Respondent offers car rental of other luxury brands (such as Ferrari, BMW and Audi), which is a clear failure to meet the requirement under point (ii) above. As a result, the Panel found that the Respondent apparently failed the Oki Data test outlined above and therefore has no rights or legitimate interest in respect of the disputed domain name. 

BAD FAITH

The Panel also finds that the Respondent must have registered the disputed domain name in the full knowledge of Complainant’s Trademarks, as the Respondent’s website offers rental of Complainant’s products. Therefore, the Respondent also must have been aware of the fact that it is not authorized by the Complainant to use Complainant's Trademarks. However, the Respondent failed to disclose such fact to the visitors of its website. Also, the Respondent has been using the disputed domain name to offer rental of products competing with those of the Complainant. Such conduct would be regarded as unfair competition (or passing off) in many jurisdictions and in the opinion of the Panel, it is also evidencing bad faith of the Respondent upon registration and use of the disputed domain name.

Therefore, the Panel decided to transfer the disputed domain name to the Complainant.