Decision for dispute CAC-UDRP-107685

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, inter alia, the owner of the following trademark registrations for the word mark LAMBORGHINI (hereinafter collectively referred to as the “LAMBORGHINI Trademark”): 

• European Union Trademark Registration No. 001098383 registered on June 21, 2000, in classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37, and 41;
• United States Trademark Registration No. 74019105, registered on November 13, 1990, in class 12;
• International Registration No. 460178, registered on March 28, 1981, in classes 3, 4, 9, 12, 14, 16, 18, 25, 28, and 34, with protection extended, inter alia, to Austria (AT), Benelux (BX), Germany (DE) and France (FR);
• International Registration No. 959504, registered on February 28, 2008, in classes 12 and 28, with protection extended, inter alia, to Singapore (SG), Australia (AU), Ukraine (UA), Serbia (RS) and Russia (RU).

The Complainant is an Italian manufacturer of luxury sports cars and SUVs based in Sant'Agata Bolognese, Italy. The disputed domain name was registered on February 13, 2019.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

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).

The Complainant has demonstrated that it is the rightful owner of the LAMBORGHINI Trademark, which enjoys legal protection in numerous jurisdictions, including in the United States, where the Respondent is allegedly domiciled according to the Registrar Verification. The Panel finds that the Complainant’s LAMBORGHINI Trademark is clearly recognizable in the disputed domain name <lamborghinilosgatos.com>. The mere addition of the geographical term “Los Gatos,” which refers to a city in California, is insufficient to avoid a finding of confusing similarity with the Complainant’s trademark under the first element of the UDRP (see Article 1.8. of WIPO Jurisprudential Overview 3.0).

The inclusion of the generic Top-Level Domain (gTLD) “.com” is a standard registration requirement and does not impact the assessment of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks (see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

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).

A complainant is required to establish a prima facie case that the respondent lacks rights or legitimate interests. Once such a case is made, the burden of proof shifts to the respondent to demonstrate their rights or legitimate interests in the disputed domain name. Failure to do so results in the complainant satisfying paragraph 4(a)(ii) of the Policy (as per Article 2.1 of WIPO Jurisprudential Overview 3.0 and WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

Based on the contentions of the Complainant, the panel finds that the Complainant has successfully established a prima facie case that the Respondent lacks rights or legitimate interests. As the Respondent has failed to provide relevant evidence demonstrating any such rights or legitimate interests, the Complainant is deemed to have satisfied the second element.

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).

The Complainant asserts that the LAMBORGHINI trademark is well-known and enjoys a strong reputation. To support this claim, the Complainant refers to its official website, a Wikipedia article, and several UDRP decisions recognizing the mark’s notoriety (e.g., Automobili Lamborghini S.p.A. v. Johan Schepers, WIPO Case No. D2021-1154).

While the Panel notes that evidence such as a Wikipedia extract and website reference may not, in isolation, conclusively establish the reputation of a trademark, it accepts that prior UDRP decisions may be taken into account in assessing whether a mark is well known, especially where the facts and parties are substantially similar. In accordance with Section 4.1 of the WIPO Overview 3.0, the Panel considers such precedent relevant and persuasive.

On this basis, and considering the cumulative evidence submitted, the Panel accepts that the LAMBORGHINI trademark enjoys significant international recognition and a strong reputation, particularly in relation to high-performance luxury automobiles.

Given the fame of the Complainant’s trademark and its long-standing use well before the registration of the disputed domain name, the Panel finds it implausible that the Respondent was unaware of the Complainant’s trademark rights. The Respondent’s registration of a domain name incorporating the Complainant’s distinctive trademark in its entirety, together with the geographically descriptive term “Los Gatos,” appears designed to capitalize on the reputation and goodwill associated with the mark. The Panel finds this conduct indicative of registration in bad faith.

For the sake of completeness, the Panel notes that it does not find sufficient evidence to establish bad faith under paragraph 4(b)(i) of the Policy. While the Complainant relies on the fame of its trademark and the redirection of the domain, these factors alone do not demonstrate that the domain name was registered with the intent to sell it to the Complainant or its competitors. In the absence of any evidence of an offer for sale or solicitation, the Panel finds that bad faith cannot be established under this specific ground.

Turning to use in bad faith, the Panel observes that the disputed domain name redirects to a website operated by an authorized reseller of Lamborghini vehicles at <www.losgatosluxcars.com>. The use of a domain name incorporating a well-known trademark to redirect users—without authorization—to a website selling the trademark owner’s products or those of competitors has consistently been held to constitute bad faith use under paragraph 4(b)(iv) of the Policy (see Conforama France v. Benjamin Kouassi, WIPO Case No. D2021-1166; WIPO Overview 3.0, Section 3.1.4).

Even if the redirection targets an authorized reseller, such use—absent permission and control by the trademark owner—can mislead consumers into believing that the domain name is operated by or affiliated with the Complainant. This supports a finding of bad faith.

Moreover, the Panel considers that the redirection, in the absence of any genuine use by the Respondent, also reflects elements of passive holding. As articulated in the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), passive holding of a domain name may amount to bad faith where, as here, the trademark is highly distinctive, the Respondent has concealed its identity, failed to respond to the Complaint, and no plausible good faith use is apparent.

In light of these cumulative circumstances—including the notoriety of the LAMBORGHINI trademark, the Respondent’s lack of response or any explanation of legitimate use, the unauthorized redirection of the domain, and the implausibility of any good faith use—the Panel finds that the domain name has been registered and is being used in bad faith.

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.

The Panel found that the Complainant owns well-known LAMBORGHINI trademarks in multiple jurisdictions. The disputed domain name <lamborghinilosgatos.com> was deemed confusingly similar to these marks, as the addition of “Los Gatos” did not prevent confusion. The Respondent failed to demonstrate any rights or legitimate interests in the domain name. Given the fame of the LAMBORGHINI trademark and the unauthorized use of the domain to redirect users to a reseller’s website, the Panel found that the domain was registered and used in bad faith. Accordingly, the Panel ordered the transfer of the disputed domain name to the Complainant.