Decision for dispute CAC-UDRP-107748

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 owns several trademark registrations comprising the word element “Lamborghini”, including but not limited to:

- European Union Trademark LAMBORGHINI (word mark), with Registration No. 001098383, registered on June 21, 2000 for goods and services in classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37 and 41; and

- United States Trademark LAMBORGHINI (word mark), with Registration No. 1622382, registered on November 13, 1990, for goods in class 12; and

- International Registration Trademark LAMBORGHINI (word mark), with Registration No. 959504, registered on February 28, 2008, for goods in classes 12 and 28 in many countries worldwide, including in Ukraine where the Respondent resides.

The Complainant is an Italian manufacturer of sports cars based in Sant’Agata Bolognese, Italy. The company of the Complainant was founded in 1963 by Ferruccio Lamborghini as Automobili Ferrucio Lamborghini. The vehicles of the Complainant belong to the world’s most famous luxury sports cars and are promoted in different languages worldwide on the internet, inter alia at the Complainant’s website “www.lamborghini.com”.

The disputed domain name was registered on October 18, 2021, and since that time has resolved to a website redirecting Internet users to a commercial car rental platform in Dubai, United Arab Emirates, prominently featuring Lamborghini-branded vehicles alongside other competing luxury marques.

The Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

(1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights, as it wholly incorporates the to the Complainant’s LAMBORGHINI mark together with the non-distinguishing terms “dubai” and “rent”;

(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted permission to use its trademark to the Respondent. The Complainant has not licensed or authorized the Respondent to use its mark. The Respondent’s use does not meet the Oki Data criteria: the site does not exclusively offer Lamborghini goods or services, but instead promotes competing brands such as Ferrari and Rolls-Royce; it does not accurately disclose the lack of relationship with the Complainant; and it misappropriates Lamborghini’s word and figurative marks. The Respondent is not commonly known by “Lamborghini”, and its use is purely commercial;

(3) The disputed domain name was registered and is being used in bad faith. Given the fame of the LAMBORGHINI mark, the Respondent clearly knew of the Complainant’s rights when registering the disputed domain name. By using the domain to attract Internet users to a commercial car rental website that creates the false impression of affiliation, the Respondent intentionally attempts to confuse consumers for commercial gain. Additional evidence of bad faith includes the Respondent’s concealment of its identity through a privacy service, the absence of any legitimate contact details, and the lack of conceivable good-faith use of the name.

The Complainant requests transfer of the disputed domain name.

The Respondent

The Respondent did not reply to the Complainant’s contentions.

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, 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).

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 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.

Language of the Proceeding 

The language of the Registration Agreement for the disputed domain name is Ukrainian.

Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English, and the Panel agrees for the following reasons:

• the Respondent registered the disputed domain name using Latin characters, indicating familiarity with English;
  
  
• the website to which the disputed domain name resolves defaults to English, with the option to select other languages if needed;
  
  
• the Complainant is an Italian-based company and English is a neutral, commonly used language internationally (see Navasard Limited v. Dmitrii Sofronov, CAC Case No. CAC-UDRP-106484); proceeding in English will avoid unnecessary delay and cost.

The Respondent made no submissions on the language of the proceeding. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel acts in the spirit of fairness and justice to both parties, taking into account all relevant circumstances, including the parties’ ability to understand and use the proposed language, as well as time and cost considerations.

Having considered the above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;

2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) that the disputed domain name has been registered or is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

Moreover, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

The Complainant has demonstrated ownership of its LAMBORGHINI trademark in various jurisdictions, including in Ukraine, where the Respondent resides. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the LAMBORGHINI mark. See WIPO Overview 3.0, section 1.2.1.

With the Complainant’s rights in the LAMBORGHINI trademark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.

The first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LAMBORGHINI, since it reproduces it in its entirety and is clearly recognizable in the disputed domain name. The addition of “dubai” and “rent” does not change the overall impression of the mark in the domain name, nor does the “.com” suffix. See WIPO Overview 3.0, sections 1.7 and 1.8. Bearing that in mind, the Panel accordingly holds the disputed domain name is confusingly similar to the Complainant’s trademark LAMBORGHINI.

The generic Top-Level Domain “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and the requirement under paragraph 4(a)(i) of the Policy is satisfied.

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of “proving a negative”, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy.

In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the term “lamborghinidubairent” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the trademark, or to apply for or use any domain name incorporating the trademark.

The use of the domain name does not qualify as a bona fide offering under UDRP. Since at least late 2021, the Respondent has used the disputed domain name for a website offering luxury car rental services in Dubai. While renting cars can be a legitimate business, the manner of use here is inherently misleading. The website’s content prominently features the LAMBORGHINI name and logo to promote rental of Lamborghini vehicles (among others) without the Complainant’s permission. Notably, the site also advertises other luxury car brands (e.g. Ferrari, Porsche, Rolls-Royce), which shows that Respondent is not exclusively offering Complainant’s goods or services. UDRP panels have set forth specific criteria (the Oki Data test) for a reseller or distributor to claim legitimate interests in a domain name containing a trademark: the reseller must actually offer the trademarked goods, only those goods, accurately disclose its relationship (or lack thereof) with the trademark owner, and not corner the market in domain names. The Respondent’s use fails these criteria.

Prior panels have held that a respondent’s use of a complainant’s mark to redirect users to another commercial website would not support a claim to rights or legitimate interests, particularly here given the risk of implied affiliation found in the composition of the disputed domain name, falsely conveying a sense of affiliation to the Complainant, contrary to the fact. See WIPO Overview 3.0, sections 2.5.1 and 2.5.3.

Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

The Complainant’s trademark registrations significantly predate the registration date of the disputed domain name. As it is proved by the Complainant, the Complainant enjoys a long-lasting worldwide reputation, which has now been established by previous panels (see, for example, Automobili Lamborghini S.p.A. v. Jon Davachi, WIPO Case No. D2022-1243). Therefore, under this Panel’s view, the Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

The evidence shows that the Respondent has used the disputed domain name in an attempt to attract Internet users for commercial gain by creating confusion with the Complainant’s trademark. The website to which the disputed domain name redirects prominently features the LAMBORGHINI name (and logo) to draw in customers seeking Lamborghini cars, and offers rental services presumably for profit.

The Panel is of the view that, by using the famous mark in the disputed domain name and on the site, the Respondent misleads users into believing the site is operated by, affiliated with, or endorsed by Lamborghini in Dubai. This falls squarely within the example of bad faith described in paragraph 4(b)(iv) of the Policy, where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source or sponsorship of the site. Indeed, the website’s content, including references to “Lamborghini Dubai” and the official logos, falsely suggests an official Lamborghini rental/club service in the UAE, which is clearly designed to trade on the Complainant’s reputation. The Panel finds that the Respondent’s use of the domain is in bad faith under Policy paragraph 4(b)(iv).

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.