Decision for dispute CAC-UDRP-107951

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

The Complainant relies on a number of trademark registrations with the word element "Lamborghini”, including the following:

• EU trademark no. 001098383 "Lamborghini” (word), registration date - June 21, 2000, filing date - March 08, 1999;

• International Trademark Registration (IR) under the "Madrid" system no. 460178 "Lamborghini” (word), registration date - March 28, 1981, protected inter alia in Austria, Germany, Switzerland and Egypt; and

• IR no. 959504 "Lamborghini” (word), registration date - February 28, 2008, protected inter alia in Albania, Armenia, Bahrain, China, Japan, Ukraine and Turkey.

THE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS 

The Complainant submits that it is an Italian manufacturer of sports cars. The Complainant's company was founded in 1963 by Ferruccio Lamborghini.

The vehicles of the Complainant belong to the world’s most famous luxury sports cars. The Complainant refers to some previous UDRP decisions that had established that its "Lamborghini" mark is well-known and has a strong reputation.

The Complainant relies on its trademark registrations "Lamborghini", including the ones cited above.

The Complainant contends that all the disputed domain names are confusingly similar to its “Lamborghini” marks.

The disputed domain names fully include the Complainant's trademark plus a descriptive and/or a geographical element (e.g. "rent", "corse" and "Dubai").

Therefore, the Complainant claims that all the disputed domain names are confusingly similar to its "Lamborghini" trademark registrations.

THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES

The Complainant submits that none of the provisions of the Policy on rights or legitimate interests apply to the Respondents in this case.

In particular, the Complainant contends that there is no non-commercial or fair use of the disputed domain names.

To the contrary, the Respondents have used the disputed domain names to direct users to their websites offering car rental services.

There is no fair use of the disputed domain names by the Respondents. The Complainant states that the disputed domain names suggest affiliation and can be seen as impersonating the Complainant.

The Complainant states that the Respondents are not commonly known by “Lamborghini” or any similar name.
The Complainant did not grant any permission to register the disputed domain names.

The Complainant also submits that the Respondents fail to comply with the nominative fair use criteria and with the "Oki Data" test as elaborated in "WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sec. 2.8.1 and in "Oki Data Americas, Inc. v. ASD, Inc.", WIPO Case No. D2001-0903.

In particular, the Complainant states that the Respondents failed to provide accurate and sufficiently prominent disclaimers clarifying the absence of any commercial or legal relationship with the Complainant and the Respondents "cornered the market" by registering several domain names that include the Complainant's mark.

THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE BEING USED IN BAD FAITH

The Complainant's submissions on the bad faith element can be summarized as follows:

• The Respondents demonstrate "pattern of conduct" and Respondents' behavior falls within par. 4 b. (ii) of the Policy. In particular, the registrations of the disputed domain names are not limited to a single instance but demonstrate a repeated course of conduct aimed at preventing the Complainant from reflecting its mark in corresponding domain names;
• The Respondents' conduct also falls within par. 4 b. (iv) of the Policy. The dispute domain names resolve to websites offering car rental services. The Complainant contends that this creates a likelihood of confusion as to whether the service is operated by, affiliated with, or endorsed by the Complainant. The Complainant refers to WIPO Overview 3.0 (sec. 3.1.4) and states that the mere registration of a domain that is identical or confusingly similar to a famous widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith and this should apply to the present dispute. The Complainant also refers to previous UDRP decisions in relation to "Lamborghini" marks;
• The Complainant also claims that other factors demonstrate bad faith, including obvious knowledge of Complainant's trademarks prior to registration of all disputed domain names, use of privacy service in the circumstances of the dispute and lack of conceivable good faith use of the disputed domain names.

The Complainant's contentions are summarized in the "Factual Background" section above

No administratively compliant Response has been filed except settlement acceptance by the two registrants (see below the "Procedural Factors" section).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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.

Settlement in respect of <lambodubai.com> and <lamborghinirentalindubai.com>

The Panel will proceed its analysis in respect of the remaining disputed domain names: <rentlamborghiniindubai.com>, <lamborghini-rent.com>, <lamborghinicorse.com>, <rent-lamborghini-dubai.com> and <lamborghinirentaldubaii.com>.

The Panel confirms the settlement in respect of these two domain names.

The Panel will proceed its analysis in respect of the remaining disputed domain names: <rentlamborghiniindubai.com>, <lamborghini-rent.com>,<lamborghinicorse.com>, <rent-lamborghini-dubai.com> and <lamborghinirentaldubaii.com>.

Consolidation of proceedings against several Respondents and domain names

According to the Registrars' Verifications, the registrant of the domain names <lamborghini-rent.com>, <lamborghinicorse.com> and <rent-lamborghini-dubai.com> is the same person - Evgeniy Parokhod and these three domain names are registered with the same registrar - "Hosting Ukraine", whereas the registrants of <rentlamborghiniindubai.com> and <lamborghinirentaldubaii.com> are two different persons and these two domain names are registered with the two different registrars.

The Complainant requested consolidation of the proceedings in respect of all disputed domain names (initially all seven disputed domain names, including the two domains that are subject to Settlement, see above) and in relation to all Respondents based on the following:

i) The Complainant claims that all disputed domain names are subject to common control. The Complainant provides as an annex to its Complaint a communication received in relation to one of the previous UDRP proceedings that lists the disputed domain names and some other domain names that include the Complainant's mark, all disputed domain names are claimed to be used for a rental car business and all disputed domain names incorporate the Complainant’s protected trademark “Lamborghini”; and

ii) The Complainant asserts that consolidation would be fair and equitable given the circumstances of the case.

The Panel notes that the disputed domain names are registered by different individuals with different registrars.

The two Respondents actually responded and agreed to settle (see above under "Settlement").

The Complainant provided a copy of communication received in connection with one of the previous UDRP disputes involving its "Lamborghini” trademark from someone who claims to operate a car rental agency in Dubai. This communication indicates that all disputed domain names may be connected to a single car rental agency or a single business. 

It is unclear what kind of connection exists between all disputed domain names and all registrants and if this is enough to establish "common control" or otherwise accept the consolidation request taking into account that the consolidation should be "fair and equitable" to both Parties (see WIPO Overview 3.0, sec. 4.11.2).

The Panel finds that there are arguments both for and against consolidation in this dispute. There are some indications in favor of consolidation (including an allegation of common control, the fact that all domain names include the Complainant's mark and follow a similar naming pattern). However, there are also arguments against consolidation, in particular different Registrars used by different registrants, different languages of the registration agreements, different names and contact details of the Respondents and the fact that the two Respondents actually responded and agreed to settlement.

As noted in "UDRP Perspectives on Recent Jurisprudence" (hereinafter "UDRP Perspectives"), updated on June 02, 2025, sec. 0.7: "Consolidation of multiple domain name disputes may not be appropriate where the respondents are different parties such as when there is a response from one of the respondents".

The Panel in this dispute is not entirely persuaded that all disputed domain names are under common control or that consolidation would be fair and equitable and that the Panel should exercise its powers under Rule 10 (e).

Therefore, the Panel proceeds as follows:

• The Panel proceeds to a decision on the merits in relation to the following disputed domain names <lamborghini-rent.com>, <lamborghinicorse.com> and <rent-lamborghini-dubai.com>. These three domain names are registered by the same registrant - Evgeniy Parokhod;

• The Panel terminates the proceeding without prejudice in relation to <rentlamborghiniindubai.com> and <lamborghinirentaldubaii.com>. The Complainant may submit a new separate complaint (complaints) in relation to these two domain names.

Therefore, the Panel will refer to a single respondent - registrant of the three (3) disputed domain names above as "Respondent" and the disputed domain names in the decision further below shall mean following domain names: <lamborghini-rent.com>, <lamborghinicorse.com> and <rent-lamborghini-dubai.com>.

Language of the administrative proceeding

According to the Registrar Verification the registration agreement is Ukrainian. The Complainant requested to conduct this proceeding in English based on the following:

i) The disputed domain names are in Latin script;

ii) The websites content is in English;

iii) Prior proceeding against the Respondent - Evgeniy Parokhod;

iv) Communication received from a person allegedly controlling the websites at the disputed domain names was in English; and

v) Unfairness to the Complainant and delay of the proceeding.

Under par. 11 (a) of the UDRP Rules unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Panel needs to consider the interests of both parties to the proceeding and provide them with a fair opportunity to present their case and at the same time to ensure that the administrative proceeding takes place with due expedition.

The Panel carefully considered the need to conduct this proceeding with due expedition and the issue of fairness to both parties and decided to accept the Complainant’s request and conduct this proceeding in English.

The websites at the disputed domain names are indeed in the English language. 

The Respondent was notified by the CAC in both Ukrainian and English languages about this proceeding and he did not submit any response (whether formal or informal).

The Panel knows both Ukrainian and English and had the Respondent submitted any response, communication and/or evidence in Ukrainian, the Panel would have considered such response /evidence.

However, the Respondent chose not to respond. 

In the circumstances when the Respondent chose to have his websites in English, taking into account prior UDRP proceeding against the Respondent (CAC Case No.107748) and the Respondent failed to submit any response, the Panel finds that changing the language of the proceeding to English would not be unfair.

Based on the above the Panel decides to proceed in English.

A. Identical or confusingly similar  

The Complainant provides evidence of ownership of various “Lamborghini” trademark registrations.

As confirmed by WIPO Overview 3.0: “where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case” (see sec. 1.2.1).

Therefore, the Complainant proved that it has trademark rights. 

Confusing similarity

The test for confusing similarity under the UDRP is relatively straightforward and typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The disputed domain names fully incorporate the trademark of the Complainant plus the elements that can be seen as geographical ("Dubai") and descriptive ("Rent" or "Corse").

As highlighted in WIPO Overview 3.0: “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element” (sec. 1.8). The Panel agrees with this view.

Here the addition of descriptive or geographical element, does not prevent a finding of confusing similarity since the “Lamborghini” mark is clearly a dominant element in the disputed domain names.

The “.com” gTLD is to be disregarded under the confusing similarity test as it does nothing to eliminate confusion.

Therefore, the Panel finds that the first requirement of the Policy has been satisfied.

B. Rights or Legitimate Interests  

The general rule with regard to the second UDRP element is the following:

(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and

(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy. 

If the respondent fails to do so, the second element of the Policy is satisfied, see “Julian Barnes v. Old Barn Studios”, WIPO Case No. D2001-0121 and sec. 2.1 of WIPO Overview 3.0.

While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows the Panel to draw such inferences as it considers appropriate, see paragraph 14(b) of the Rules and CAC Case No. 101284: "A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable inferences may be drawn from the information provided by the complainant”.

Here the Complainant has made a prima facie case and the Respondent failed to respond and address Complainant's allegations.

The disputed domain names resolve to websites offering car rental services in Dubai.

As established by UDRP case law resellers and service providers (both authorized and unauthorized) can have a legitimate interest in respect of a disputed domain name under certain circumstances, see sec. 2.8 of WIPO Overview 3.0 and “Oki Data Americas, Inc. v. ASD, Inc.”, WIPO Case No. D2001-0903, <okidataparts.com>.

Resellers’/servce providers' use of domain names can, under certain circumstances, constitute “a bona fide offering of goods or services” under par. 4 (c.) (i) of the Policy.

Usually UDRP panels consider four (4) criteria outlined in 2.8 of WIPO Overview 3.0 and in the “Oki Data” decision.

At the same time, while the “Oki Data” test has consistently been applied since 2001, it can be adapted to specific circumstances of a particular case and some UDRP panels adopt a more holistic approach to the Oki Data criteria, see sec. 2.3 of “UDRP Perspectives”, updated June 02, 2025.

The Panel finds that the absence of a disclaimer per se does not necessarily negate legitimate interest of a reseller/distributor/service provider where the website content and other circumstances make it clear that the respondent is not affiliated with the trademark owner.

The Panel notes with regard to "accurate disclosure" of the registrant’s relationship with the trademark owner, that the websites at the disputed domain names do not contain any clear statements explaining absence of affiliation with or endorsement by the Complainant.

One of the websites contains description of the business and a disclaimer that "We are not affiliated with Automobili Lamborghini S.p.A. and are not an official dealer or representative of the brand in the UAE". 

One can also argue that the websites' content indicates that this is a rental car business and does not necessarily indicate affiliation or endorsement.

However, the Panel notes that the nominative fair use must be "fair", should not go beyond what is necessary to describe its business and under the nominative fair use respondents should not register multiple domain names incorporating the Complainant's mark.

Nominative fair use is an exception to the rule that no trademark use is allowed without owner's permission and as noted by Gerald Levine in one of the leading authoritative works on Domain Names and Trademarks: "Nominative fair use of another’s trademark is an exception to the general rule which holds “it is generally not permissible to register a domain name that is the same as another’s trade mark rights, knowing of those trade mark rights, to seek traffic to a commercial website” (see “The Clash of Trademarks and Domain Names on the Internet”,  Volume 1, Gerald M. Levine 2024, “Legal Corner Press”, page 445).

Here the Respondent tried to "corner the market" by registering three domain names that incorporate the Complainant's trademark, thus depriving the owner from reflecting its own mark in corresponding domain names. 

Based on the above the Panel finds that nominative use must be fair and Respondent’s registration and use of the disputed domain names in the circumstances of this case is not fair and is not bona fide offering of goods.

Therefore, the Panel finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith  

The Panel first notes that the failure to comply with the nominative fair use test does not always establish respondent’s bad faith (see sec. 2.3 of UDRP Perspectives and “Thor Tech Inc. v. Eric Kline”, WIPO Case No. D2023-4275).

If respondent’s behavior does not fall within the scope of abusive domain name registration (“cybersquatting”), there is no bad faith.

Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith. These circumstances are non-exhaustive and other factors can also be considered.

It is well established that bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see sec. 3.1 of WIPO Overview 3.0).

Cybersquatting or abusive registration can be defined as “registration made with bad-faith intent to profit commercially from others' trademarks” (see par. 4.1 c. of the ICANN “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy”, 1999).

Targeting with the intent to take an unfair advantage of the complainant’s mark is important in establishing bad faith under the Policy.

As noted in "UDRP Perspectives" in sec. 3.3: “targeting can be established by either direct evidence (e.g. content of the website) or circumstantial evidence such as strength of the mark and nature of a disputed domain name (e.g. mark plus a term describing Complainant’s business), timing of registration of a domain name and timing of trademark registration, geographic proximity of the parties”.

Here direct evidence clearly indicates that the Respondent targeted the Complainant and such targeting was with an intent to profit commercially from its trademarks.

The Panel finds that the disputed domain names were registered and are being used in bad faith based on the following:

1. The nature of the disputed domain names – confusingly similar to well-known trademarks plus a geographical and /or descriptive term and the timing of the registration of the disputed domain names, October 2021, many years after the Complainant obtained protection for its trademarks and started its business. The Complainant provided evidence that its marks are well-known and enjoy strong reputation. Based on the fame and strong reputation of the trademarks the Panel finds that the Respondent registered the disputed domain names keeping in mind the Complainant’s marks. The composition of the disputed domain names demonstrates an intent to target the Complainant.
2. The nature of use of the disputed domain names and the content of the websites clearly demonstrate targeting. 
3. The Respondent registered and is using the disputed domain names to take commercial advantage of the Complainant's trademarks.

4. By registering three (3) disputed domain names the Respondent engaged in a pattern of conduct preventing the Complainant “from reflecting the mark in corresponding domain names”. As provided in WIPO Overview 3.0 establishing a pattern of conduct “requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even were directed at the same brand owner” (see sec. 3.1.2). Here there is a clear pattern of conduct, also taking into account a previous decision against the Respondent relating to the same Complainant's trademark (see CAC Case No. 107748).

Based on the above, the Panel finds that Respondent’s behavior falls within, at least, par. 4 b. (ii) and par. 4 b. (iv) of the UDRP since the Respondent has engaged in “a pattern of conduct” by registering the disputed domain names “to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” and the Respondent by using the disputed domain names has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement. 

The Panel holds that the third requirement of the Policy has been satisfied.