Decision for dispute CAC-UDRP-108137

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 several LAMBORGHINI registered trademarks, including:

UK trademark LAMBORGHINI n°00901098383 registered on June 21, 2000;

UK logo trademark LAMBORGHINI n°00903495579 registered on August 3, 2005;

European trademark LAMBORGHINI n°0010983833 registered on June 21, 2000; and

International trademark LAMBORGHINI n°460178 registered on March 28, 1981.

The Complainant – commonly referred to as Lamborghini – 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 operates an official showroom in Dubai and additionally promotes its services, among other channels, via <https://lamborghini-dubai.com/en>.

The disputed domain name <rentlamborghiniindubai.com> was registered on February 25, 2023.

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, 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.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." 

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

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

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

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

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at paragraph 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

As to the first element, the Complainant has shown that it has rights in the LAMBORGHINI mark and that the mark is famous. The Panel finds the disputed domain name <rentlamborghiniindubai.com> to be confusingly similar to the Complainant’s LAMBORGHINI mark because it incorporates the mark in its entirety and merely adds the descriptive words “rent”, “in” and “Dubai” which are insufficient to distinguish the domain name from the mark. The inconsequential top-level domain “.com” may be ignored under this element. The Complainant has established this element. 

As to the second element, paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has used the domain name to direct users to the website of a luxury car rental service and cannot claim a bona fide offering under the Oki Data test because the website fails to provide accurate and sufficiently prominent disclaimers clarifying the absence of any commercial or legal relationship with the Complainant. Further, the Complainant asserts that a non-commercial or fair use of the domain name is not cognizable, and to the best of the Complainant’s knowledge, the Respondent is not commonly known by “Lamborghini”, “rent”, “Dubai” or “rentlamborghiniindubai”. No permission to use “Lamborghini” was granted by the Complainant to the Respondent.  

The Panel finds there is no evidence that the Respondent has been commonly known by the disputed domain name nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel notes that the disputed domain name <rentlamborghiniindubai.com> was registered on February 25, 2023, long after the Complainant has shown that its LAMBORGHINI mark had become famous. It resolves to a website prominently displaying Complainant’s LAMBORGHINI logo mark together with the name LAMCARS, depicting images of Lamborghini vehicles offered for rental in Dubai, showing pricing per day.

The Panel accepts the Complainant’s contention that the test formulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, applies to car rental services as it does to resellers and distributors of the goods of a complainant. Under that test, panels have recognized that resellers, distributors, or service providers using a domain name containing the Complainant’s trademark to undertake sales or repairs related to the Complainant’s goods or services may be making a bona fide offering of goods or services and thus have a legitimate interest in such domain name, provided that the following cumulative requirements are met (the ‘Oki Data test’):

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

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

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

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.

The Complainant contends that the website operated under the disputed domain name lacks the requirement (iii) of transparency and disclosure because it fails to provide accurate and sufficiently prominent disclaimers clarifying the absence of any commercial or legal relationship with the Complainant.

The recent decision in CAC-UDRP-107605 <lostmarydirect.com> noted that the requirement for a disclaimer was established in 2001, when using the Internet was not yet a part of everyday life for the public, and that it is now time to adjust the Oki Data criteria according to current needs in the e-commerce world. The panel set out the following Revised Oki Data criteria (Lost Mary criteria):

1. There is actual offering of goods and services via Respondent’s website at issue;

2. The use of the website is to sell only the specific trademarked goods which have been brought into the market by the trademark owner and;

3. The Respondent’s website can be easily distinguished from that of the trademark owner. Aspects that can be decisive to distinguish Respondent’s website from that of the trademark owner are inter alia (but not limited):

        (i) the placing of a disclaimer disclosing Respondent’s relationship with the trademark owner on the home page of the website;

       (ii) the creation of a different look and feel of the website of Respondent as compared to the website of the trademark owner;

       (iii) the dominant use of resellers’ websites specific elements like pricing and depiction of the goods;

       (iv) the use of a logo on the top of the home page, not including the trademark as mentioned in the disputed domain name, that addresses the entity of Respondent on the website.

       (v) the Respondent must also not try to corner the market in domain names that reflect the trademark.

In the present case, the Panel finds that the Respondent’s website cannot be easily distinguished from that of the trademark owner. There is no disclaimer on the home page of the Respondent’s website, which displays the Complainant’s logo mark, contrary to Lost Mary criteria 3(i) and (iv), and that the website states: “In our catalog, you can choose an auto of any class: convertible, hatchback, coupe, minivans, crossover, or sedan, so you'll stay pleased whether you want to rent Lamborghini Dubai, rent Rolls Royce, or book KIA”, contrary to Lost Mary criterion 2.

Hence the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established this element. 

As to the third element, Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: “the domain name has been registered and is being used in bad faith” and Paragraph 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii), including:

     (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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.

The circumstances set out above in relation to the second element satisfy the Panel that that the Respondent was fully aware of the Complainant’s famous LAMBORGHINI mark when the Respondent registered the disputed domain name and did so intentionally in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy 4(b)(iv). The Complainant has established this element.