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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automobili Lamborghini Holding S.p.A. v. Primal Ventures Inc.

Case No. D2008-0548

1. The Parties

The Complainant is Automobili Lamborghini Holding S.p.A. of Italy, represented by HK2 Rechtsanwдlte, Germany.

The Respondent is Primal Ventures Inc., of United States of America.

2. The Domain Name and Registrar

The disputed domain name <lamborghininewsletter.com> is registered with Moniker Online Services, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2008. On April 10, 2008, the Center transmitted by email to Moniker Online Services, Inc. a request for registrar verification in connection with the disputed domain name. On April 11, 2008, Moniker Online Services, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2008.

The Center appointed David J.A. Cairns as the sole panelist in this matter on May 13, 2008. The Panel finds that it was properly constituted. 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 an Italian car manufacturer that was founded in 1963. The Complainant is currently a wholly owned subsidiary of Audi AG.

The Complainant is the owner of numerous national and international trademark registrations of the mark LAMBORGHINI, including:

- the CTM Registration No 001098383 for the mark LAMBORGHINI registered on June 21, 2000; and

- USPTO registration No1375514 for the mark LAMBORGHINI with a shield and bull design registered on December 17, 1985.

The Complainant is also the owner of several domain names including the mark LAMBORGHINI, such as <lamborghini.com> and <lamborghini-newsletter.com>. The <lamborghini-newsletter.com> domain name is used for a password protected site for the Complainant’s dealers.

The Respondent first registered the disputed domain name on January 7, 2007. On May 16, 2008, the Panel tried to enter the webpage of the disputed domain name, but was not able to do so.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its LAMBORGHINI trademark since

(i) it is composed of the Complainant’s trademark and the common English word “newsletter”;

(ii) the mark LAMBORGHINI is a known trademark that constitutes the distinctive part of the disputed domain name;

(iii) addition of a merely descriptive term to a known trademark does not render the trademark any less distinctive;

(iv) the combination of the words used in the disputed domain name suggest that there is a legal relationship between the Complainant and the Respondent;

(v) the Complainant uses the domain name <lamborghini-newsletter.com> and therefore the Respondent’s use of the Complainant’s mark and the word “newsletter” in the disputed domain name further enhances confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since:

(i) there is no indication of the Respondent’s use of or preparations to use the disputed domain name in connection with a bona fide offering of goods and services;

(ii) the Complainant’s use of its trademark predates the registration of the disputed domain name;

(iii) the webpage automatically resolves to the website “www.theglobalweb.com”, which is owned by the Respondent and contains links to sites containing advertisements;

(iv) the Respondent advertises vehicles that compete directly with the Complainant’s vehicles;

(v) the Respondent’s intention is to increase its advertisement revenues by using the Complainant’s trademark to attract users to that advertisement network;

(vi) the Respondent is not commonly known by the names “lamborghini” or “lamborghini newsletter”;

(vii) the Respondent has no cognizable rights in the trademark LAMBORGHINI;

(viii) the Respondent uses the disputed domain name for pay per click advertisements and does not make a non-commercial or fair use, nor are there reasons to expect such a use in the future; and

(ix) the Respondent did not reply to the warning letters sent by the Complainant.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith since: (i) the combination of a trademark with the term “newsletter” is generally used to designate publications of the owner of the mark; (ii) the Respondent presents itself as specialized in targeted marketing, including car related advertisements, which shows that its intention is to profit from the Complainant’s mark by exploiting users who are looking for the Complainant’s products; (iii) there is no relationship between the Parties and the Complainant has not authorized or consented to the use of its trademark by the Respondent; (iv) the Respondent knew or should have known of the Complainant’s trademarks before the disputed domain name was registered; and (v) the Respondent’s use of the Complainant’s trademark dilutes the distinctiveness of the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.

Paragraph 4 (a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates non exclusive circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the trademark LAMBORGHINI by virtue of its trademark registrations referred to above.

The disputed domain name consists of the mark LAMBORGHINI and the descriptive suffix “newsletter”. The disputed domain name is not identical to the Complainant’s trademark and it is the Complainant’s contention that the disputed domain name is confusingly similar to its LAMBORGHINI trademark.

In Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870, the panel held that the fact that a domain name incorporates a trademark in its entirety is a solid indication of but does not ipso facto mean that the domain name is confusingly similar to the trademark. The similarity depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin”.

In some circumstances a descriptive suffix may reduce or eliminate the confusion arising from the use of a trademark, such as where the trademark is not distinctive or strong in secondary meaning. For example, in Digital City, Inc. v. Smalldomain, WIPO Case No. D2000-1283, the panel stated that: “consumers are not likely to be confused where (1) a domain name comprises a mark and a suffix; (2) where that mark is essentially generic within the online world and has not acquired such distinctiveness as to merit broader protection, and (3) where the suffix (or the domain name as a whole) does not relate specifically to the business of the Complainant”.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LAMBORGHINI for the following reasons: (i) the LAMBORGHINI trademark is inherently distinctive with substantial secondary meaning because of its international reputation; (ii) the suffix “newsletter” is descriptive; (iii) the suffix refers to the trademark element of the disputed domain name in a trademark sense, i.e., it suggests a newsletter about the LAMBORGHINI cars; and (iv) Internet users will associate the disputed domain name with the Complainant’s trademark, and mistakenly believe that the Respondent’s website offers news and information about the Complainant’s cars.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a LAMBORGHINI trademark; (ii) the Respondent is not authorised or licensed by the Complainant to use the LAMBORGHINI trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been known by the name “Lamborghini” or “lamborghini newsletter”; and (iv) there is no evidence of legitimate non-commercial or fair use of the disputed domain name.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case.

As stated above, the Panel has not been able to access any website at the disputed domain name. However, the Complainant has submitted evidence, which the Panel accepts, that the webpage at the disputed domain name was used to automatically forward Internet users to the website “www.theglobalweb.com”, which is owned by the Respondent and contains links leading to websites containing advertisements that include vehicles of car manufacturers which compete directly with the Complainant. Therefore, in relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through sponsored links, and also that the use of the disputed domain name to attract Internet traffic by deception (that is, by falsely suggesting the website relates in some manner to the LAMBORGHINI trademark) is not a use in connection with a bona fide offering of goods or services.

Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Thus, the second element of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Complainant has alleged that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or to the website linked thereto, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which constitutes bad faith in terms of paragraph 4(b)(iv) of the Policy.

In the present circumstances, the Panel is satisfied that there is bad faith registration and use within the meaning of paragraph 4(b)(iv) because: (i) the disputed domain name creates confusion with the Complainant’s LAMBORGHINI trademark, for the reasons already explained, in relation to source, sponsorship, affiliation, or endorsement of the Respondent’s website; (ii) the Respondent redirected users from the website at the disputed domain name to the “www.theglobalweb.com” website, which is also owned by the Respondent; (iii) “www.theglobalweb.com” website contains advertisements and sponsored links, establishing the intention to attract Internet users for commercial gain on the part of the Respondent.

Bad faith under Paragraph 4(b)(iv) is particularly strong in the present case because the Respondent presents itself as specialised in “targeted marketing” so that the advertisements displayed are based on the profile of the Internet user. The Panel considers that the Respondent must have known of the Complainant’s famous LAMBORGHINI trademark at the time of registration, and selected it so as to attract Internet users with an interest in the Complainant’s cars, or cars generally.

Accordingly, this Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lamborghininewsletter.com> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist

Dated: May 28, 2008