Automobili Lamborghini S.p.A. v. Louis Rich, J L RICH
Case No. D2014-1259
1. The Parties The Complainant is Automobili Lamborghini S.p.A. of Sant’Agata Bolognese, Italy, represented by Piper Alderman, Australia.
The Respondents are Louis Rich of Vaucluse, New South Wales, Australia; J L RICH of Rose Bay, New South Wales, Australia.
2. The Domain Name and Registrar The disputed domain name (the “first disputed domain name”) is registered with Crazy Domains FZ-LLC. The disputed domain name (the “second disputed domain name”) is registered with GoDaddy.com, LLC.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2014. On July 23, 2014, the Center transmitted by email to GoDaddy.com, LLC and Crazy Domains FZ-LLC (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On July 23 and 25, 2014, each of the Registrars transmitted by email to the Center their verification responses confirming:
(a) it is the registrar of the relevant disputed domain name;
(c) the first disputed domain name was first registered on February 6, 2014;
(d) the second disputed domain name is registered in the name of Louis Rich and providing the contact details;
(e) the second disputed domain name was first registered on March 19, 2014;
(f) the registration agreements are in English;
(g) that the Respondents are listed as the registrant and providing the contact details.
In response to a notification by the Center regarding consolidation of multiple Respondents, the Complainant submitted its request for consolidation on July 30, 2014.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 21, 2014.
The Center appointed Warwick A. Rothnie, Mary Padbury and Michael J. Spence as panelists in this matter on September 17, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background The Complainant is the well-known manufacturer of cars. Its predecessor first commenced in business in 1963. It vehicles are amongst the world’s most famous luxury sports cars.
The Complainant is the owner of numerous registered trademarks around the world for, or which include, LAMBORGHINI, the earliest of which appears to be Italian registered trademark No. 326126 for LAMBORGHINI, registered on October 21, 1980 for a range of goods in International Classes 3, 4, 9, 12, 14, 16, 18, 25, 28 and 34. Other registrations include:
(a) Community Trademark No. 001098383 for LAMBORGHINI, registered on June 21, 2000 in International Classes 7, 9, 12, 14, 16, 18, 25, 27, 28, 36, 37 and 41;
(b) United States of America Registered Trademark No. 1622382 for LAMBORGHINI, registered on November 13, 1990 in International Class 12;
(c) Australian Registered Trademark No. 371147 for the device of a bull on a shield with LAMBORGHINI emblazoned above it, registered on February 4, 1982 for automobiles and parts and accessories therefore in International Class 12;
(d) Australian Registered Trademark No. 1239086 for LAMBORGHINI, registered on February 28, 2008 in International Classes 12 and 28.
Not many details are known about the Respondent (or Respondents if they are not the same person).
In view of the consolidation request, it is appropriate to record first that Rose Bay Automotive Pty Ltd (“Rose Bay”) or an associated entity registered and in February 2006. Those two domain names are the subject of a separate proceeding under the .au Dispute Resolution Policy.
For at least some period, the two “.com.au” domain names resolved to a website for Lamborghini Sydney Service. In November 2013, however, there was correspondence between Rose Bay and lawyers for the Complainant. This culminated on November 27, 2013 with Rose Bay providing undertakings to the Complainant, amongst other things, to cease using “Sydney Lamborghini Service”, “Lamborghini Sydney Service” or the word “Lamborghini” in any company, business or trading name and also to cease using for any website in connection with Rose Bay’s business. Rose Bay, however, refused to transfer to the Complainant. (So far as appears from the record was not the subject of specific complaint by the Complainant.)
It was against this background that the Respondent, J L Rich, registered the first disputed domain name on February 6, 2014 – just over two months later. In doing so, the address used by the Respondent, J L Rich, was the address of Rose Bay.
On February 21, 2014, the domain name became registered in Rose Bay’s name with the Registrar GoDaddy.com, LLC.
On March 19, 2014, the domain name became registered in Rose Bay’s name with the Registrar GoDaddy.com, LLC too.
Also on March 19, 2014, Louis Rich registered the second disputed domain name, , with the Registrar GoDaddy.com, LLC.
On April 4, 2014, after the Complainant’s lawyers sent another letter of demand to Rose Bay, Rose Bay wrote to the Complainant’s lawyers rejecting their demands and offering to sell both disputed domain names and the two “.com.au” domain names for AUD 10,000.
5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of the disputed domain name, the complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint and the Written Notice have been served, however, on the electronic and physical coordinates, respectively, specified in the WhoIs record (and confirmed as correct by the Registrars) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on both Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The address of the two Respondents, if they are different people, is not the same. The Complainant contends, however, that its complaints against both of them may properly be consolidated in the one Complaint.
The Complainant also relies on the addresses of the two Respondents in the WhoIs record being within 1.7km of each other. While that is close (approximately a mile apart), that is not conclusive in a large city like Sydney. However, there are the following additional factors:
(1) the two Respondents share a common surname;
(2) the two Respondents share a common initial in their forename;
(3) the second disputed domain name, , was registered with the Registrar GoDaddy.com, LLC on the same day, March 19, 2014, as GoDaddy.com, LLC became the Registrar for in Rose Bay’s name;
(4) the email address for the contact details for both disputed domain names takes the form [registrar’s name]@itoro.com;
(5) as noted above, the Respondent, J L Rich, gave as his address in the WhoIs record for the first disputed domain name the same address as Rose Bay’s address; and
(6) Rose Bay offered both disputed domain names and the two “.com.au” domain names for sale.
In these circumstances, the Panel infers that Louis Rich and J L Rich, if different people, are associated with Rose Bay and acting as its agents in some way. Moreover, as the two disputed domain names contain as their distinctive element the word LAMBORGHINI which is the Complainant’s trademark or, in the case of the shield device, a distinctive component of it, the Panel considers it is appropriate to consolidate the disputes about both disputed domain names in the one Complaint.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, each disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above. A number of these are for the word LAMBORGHINI alone. Others are for the word LAMBORGHINI over a bull on a shield. Although the bull is much larger, the Panel considers that the word LAMBORGHINI is nonetheless a distinctive element of the trademark as, amongst other things, that is a natural verbal reference point for that trademark.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant’s proved trademarks. See, for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain names as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Neither disputed domain name is identical to the Complainant’s registered trademarks since, apart from the generic Top-Level Domain, each disputed domain name includes additional descriptive terms These descriptive terms, however, are entirely apt terms for use to describe services associated with the Complainant in Sydney so that notional users of the Internet could well expect the disputed domain names to indicate some sort of relationship with the Complainant. That is also the case in respect of the Complainant’s trademark in the form of the shield device since, as discussed above, the word LAMBORGHINI is a distinctive component of that trademark.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondents have rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondents] of the dispute, [the Respondents’] use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the [disputed] domain names in connection with a bona fide offering of goods or services; or
(ii) [the Respondents] (as individuals, businesses, or other organizations) have been commonly known by the [disputed] domain names, even if [the Respondents] have acquired no trademark or service mark rights; or
(iii) [the Respondents] are making a legitimate noncommercial or fair use of the [disputed] domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is, or likely to be, in the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorised either Respondent to use either disputed domain name. Nor is either Respondent affiliated with it.
The disputed domain names are plainly not derived from either Respondent’s name. There is no evidence before the Panel that either Respondent was previously known by a name which is or includes “Lamborghini”. Insofar as either Respondent claims rights through Rose Bay, the Panel considers that the undertakings given by Rose Bay on November 27, 2013, to cease using as a website and to cease using “Lamborghini” in any company, business or trading name extinguished any basis for Rose Bay or either Respondent to claim prior rights under the Policy based on usage.
In these circumstances, the Complainant has established a clear prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. Neither Respondent has sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondents.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Panel notes that both disputed domain names were registered after Rose Bay provided the undertakings to cease using “Lamborghini” in any company, business or trading name and also to cease using for any website. The domain name is of course the same as the second disputed domain name save that it is in the .au domain name space.
Secondly, Rose Bay demanded payment of AUD 10,000 for both disputed domain names and the two “.com.au” domain names very shortly after the disputed domain names were registered. In the case of the first disputed domain name, this was two months later and in the case of the second disputed domain name, this was less than one month later. While the sum of AUD 10,000 was not apportioned between the four domain names, it is plainly a substantial sum in excess of what it would typically cost to register domain names in either the “.com” or “.com.au” domain spaces. The Panel infers that in calculating that amount Rose Bay was seeking to take advantage of the word LAMBORGHINI as the Complainant’s trademark.
If Rose Bay had registered the disputed domain names itself, the Panel would readily have found those registrations to be in bad faith having regard to the undertakings given on November 27, 2013 and the demand for payment which clearly exceeds the out-of-pocket costs that would typically be incurred in registering them.
Moreover, for the reasons set out above, the Panel infers that both Respondents were working in concert with, or as agents for, Rose Bay when they registered their respective disputed domain names. In those circumstances, the Panel considers that neither Respondent can be in a stronger position than Rose Bay and, accordingly, finds that both disputed domain names were registered and used in bad faith.
In the circumstances of this case, Rose Bay’s assertion of entitlement to ownership of the disputed domain names and offer to sell them (with the two “.com.au” domain names) for AUD 10,000 constitutes registration and use in bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy.
6. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.