Decision for dispute CAC-UDRP-108372

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 the following word trade marks consisting of or incorporating the name LAMBO: the European Union trade mark LAMBO, registration number 006113451, first registered on 28 April 2008 in international classes 7, 9 and 12; and the Swiss national trade mark LAMBO, registration number 582110, first registered on 26 January 2009 in international classes 7, 9 and 12. 

In addition, the Complainant owns a large portfolio of national and international word trade marks consisting of or incorporating the name LAMBORGHINI, including the European Union trade mark LAMBORGHINI, registration number 001098383, first registered on 03 August 1999 in international classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37 and 41; the US national trade mark LAMBORGHINI, registration number 74019105, first registered on 21 August 1990 in international class 12; the international trade mark LAMBORGHINI, first registered on 28 March 1981 in international classes 3, 4, 9, 12, 14, 16, 18, 25, 28, and 34 and the international trade mark LAMBORGHINI, first registered on 28 February 2008 in international classes 12 and 28.  The aforementioned trade mark registrations of the Complainant all predate the registration of the disputed domain name.

The Panel accepts the Complainant’s submission by reference to numerous other UDRP decisions that both the Complainant’s trade marks LAMBO and LAMBORGHINI are extensively used, widely recognised, have accrued strong reputation, and that they are distinctive and well-known internationally.  

Furthermore, the Complainant owns the domain name <www.lamborghini.com>, registered on 16 September 1996, which connects to the Complainant’s official website through which it informs Internet users and potential customers about the Lamborghini brand, and its products and services.

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. The vehicles of the Complainant belong to the world’s most famous luxury sports cars.

The disputed domain name <lambo.ai> was registered on 06 April 2022 and resolves to a blank page marked only “This site is private”. There is no evidence before the panel to suggest that the disputed domain name has ever been used for an active website since it was registered.

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 trade mark 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.

With regard to the first UDRP element, the Panel finds that the disputed domain name is identical with the Complainant's trade mark LAMBO. Indeed, the disputed domain name incorporates the Complainant's trade mark in its entirety without any alteration. The Panel follows in this respect the view established by numerous other decisions that a domain name which wholly incorporates a Complainant's registered trade mark is sufficient to establish confusing similarity for the purposes of the UDRP (see, for example, WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin <porsche-autoparts.com>).  While not strictly necessary in light of this finding, the Panel also finds the disputed domain name to be confusingly similar to the Complainant’s trade mark LAMBORGHINI: “Lambo” is a well-known and commonly used abbreviation of the name Lamborghini and clearly evokes a significant word component of the Complainant’s trade mark LAMBORGHINI.

With regard to the second UDRP element, the Panel observes that somebody using the Respondent’s e-mail address (but not his name) has offered the disputed domain name for sale to the Complainant. It is commonly accepted that aggregating and holding domain names (including for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.  However, the name LAMBO is fanciful, protected as a trade mark, and does not fall under any of these categories. The Panel further accepts the Complainant’s submission that there is no evidence to suggest that the Respondent has made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Panel further finds that the Respondent is not affiliated with or related to the Complainant in any way and is neither licensed nor otherwise authorised to make any use of the Complainant’s trade marks or to apply for or use the disputed domain name. Additionally, the Whois information for the disputed domain name does not suggest that the Respondent is commonly known by the disputed domain name <lambo.ai>. Past panels have held that a respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name, as is equally not the case here (see, for example, Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Finally, there is no indication that the Respondent is making legitimate non-commercial or fair use of the disputed domain name.  As set out above, the domain name is passively held and identical to the Complainant’s LAMBO trademark. Other UDRP panels have consistently found that domain names identical to a complainant’s trade mark carry a high risk of implied affiliation and are, by their nature, incapable of supporting fair use by an unaffiliated party (see section 2.5.1 of the WIPO Overview 3.0). Against this background, and absent any response from the Respondent, or any other information indicating the contrary, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

With regard to the third UDRP element, while no price for the sale of the disputed domain name to the Complainant was in the event discussed between the Complainant and the Respondent, the Panel accepts the Complainant’s submission that the wording of the Respondent’s communication to the Complainant suggests that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. While the WIPO Overview 3.0 states at paragraph 3.1.1 that the practice of registering a domain name for subsequent resale does not by itself establish that a respondent registered the domain name for the purpose of selling in bad faith to the complainant or a competitor, a fact-specific enquiry may lead to such a finding.  Against this background, the Panel finds it reasonable to infer that the Respondent either knew, or should have known, that the disputed domain name would be identical or confusingly similar to the Complainant's trade marks, and that the Respondent registered the disputed domain name in full knowledge of the Complainant's trade mark. Indeed, if the Respondent had carried out a Google search for the term “Lambo”, the search results would have yielded immediate results related to the Complainant, its websites, and its connected business and services. It is likely that the disputed domain name would not have been registered if it were not for the Complainant's trade mark (see, for example, WIPO Case No D2004-0673, Ferrari Spa v. American Entertainment Group Inc <ferrariowner.com>). Furthermore, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trade mark by an unaffiliated entity can by itself create a presumption of bad faith pursuant to paragraph 4(b)(iv) (3.1.4, WIPO Jurisprudential Overview 3.0). It is in any event difficult to conceive of any plausible actual or contemplated active use of the disputed domain name by any third party that would not be illegitimate on the grounds that it would constitute passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trade mark law under circumstances where the disputed domain name is identical with the Complainant’s trade mark LAMBO, confusingly similar to the Complainant’s trade mark LAMBORGHINI, and is similar to the Complainant’s genuine domain name currently used by the latter to promote its goods and services.  The disputed domain name is therefore primarily (if not exclusively) of interest to the Complainant. The Panel derives yet further support for a finding of bad faith on the part of the Respondent from the fact that the Complainant’s trade mark registrations long predate the Respondent’s registration of the disputed domain name because the Complainants’ LAMBO trade mark was registered as early as 2008, whereas the Disputed Domain Name was registered in 2022, constituting a gap of some 14 years (see, for example, WIPO Case No. D2021-1934, Natixis v. Felix Anderson <natixisbnk.com>, where the Panel found that: ‘’… In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can, in certain circumstances, be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by 15 years. Absent any response from the Respondent, or any other information indicating the contrary, the Panel therefore also accepts that the Respondent has registered and is using the disputed domain name in bad faith.