The Complainant is Automobili Lamborghini S.p.A., Italy, represented by HK2 Rechtsanwälte, Germany.
The Respondent is CoCo (黄登通), China, self-represented.
The disputed domain name <lamborghini.xyz> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on June 5, 2020.
On June 4, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On June 5, 2020, the Complainant confirmed its request that English be the language of the proceeding. On June 8, 2020, the Respondent requested that Chinese be the language of the proceeding.
The Center verified that the Complaint together with amendment to 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 and 4, the Center formally notified the Respondent in English and in Chinese of the Complaint, and the proceedings commenced on June 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2020. On June 28, 2020, the Respondent requested an extension of the Response due date to August 1, 2020. The Center sent an email to the Parties, inviting the Complainant to comment by July 1, 2020. The Complainant did not comment. The Response was filed in Chinese with the Center on August 1, 2020. The Center received unsolicited supplemental filings from the Complainant in English on August 5 and 11, 2020, and from the Respondent in Chinese and English on August 7 and 14, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 18, 2020. 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.
The Complainant manufactures sports cars. It was founded in 1963 by Mr. Ferruccio Lamborghini. The Complainant is the holder of multiple trademark registrations for LAMBORGHINI, including United States of America trademark registration number 1622382, registered on November 13, 1990, specifying automobiles and their structural parts in class 12, and International trademark registration number 959504, registered on February 28, 2008, designating multiple jurisdictions including China, specifying vehicles and parts thereof in class 12 and model cars in class 28. The Complainant promotes its goods in multiple languages at “www.lamborghini.com”.
The Respondent is an individual resident in China.
The disputed domain name was created on May 8, 2020. It resolves to a domain name broker’s landing page (“www.dan.com”). The landing page formerly displayed the notice “The domain name lamborghini.xyz is for sale!” alongside an invitation to make an offer to buy the disputed domain name by specifying a dollar amount. At the time of this decision, the landing page displays a notice that the disputed domain name has been deleted. The disputed domain name was also offered for sale on a German online platform for the price of EUR 130 for the first year.
According to information supplied by the Complainant, a panel in a recent proceeding under the Policy found that the Respondent (using a different English name) had registered and was using another domain name in bad faith: see Real Madrid Club de Futbol v. Lee Charles (黄登通), WIPO Case No. D2020-0540.
The disputed domain name is identical to the Complainant’s LAMBORGHINI trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not in any way affiliated with the Complainant. The Respondent is not commonly known by “Lamborghini”. The Respondent has not been authorized by the Complainant to use the Complainant´s trademarks. The Respondent has not acquired any trademarks or other rights comprising the string “Lamborghini”.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name. “Lamborghini” is not a common dictionary word and the Complainant’s trademarks are extremely well known around the world, including in China. It is inconceivable that the Respondent was not aware of the Complainant’s trademarks. The disputed domain name redirects to a landing page where the disputed domain name is not offered for a certain price, but internet users are invited to make an offer. This indicates that the Respondent wishes to sell the disputed domain name to the highest bidder, for a price exceeding his out of pocket expenses by exploiting the goodwill of the Complainant’s trademarks.
The Complainant’s trademark is completely different from the disputed domain name and the two will not be confused. The initial element of the disputed domain name is indeed the same as the Complainant’s brand name but this does not mean that the two are confusingly similar. Identical trademarks are not necessarily confusing because each can be registered in a different class. A trademark is a brand name directly used for a product, and a domain name is the main part of a website address. The two are completely different and have no direct relationship, so there will be no confusion. The content of the website to which the disputed domain name resolves makes no reference to the Complainant’s trademark. The website only offers the sale price of USD 100 and has no other content, so the disputed domain name will not be confused with the trademark of the Complainant or anyone else. The Complainant cites many precedents but these should not be followed if they are wrong.
Buying and selling domain names is completely legitimate and does not constitute evidence of bad faith. The Respondent does not intend to use the disputed domain name in connection with an offering of goods and services related to the disputed domain name. When he registered the disputed domain name, he only intended to resell it. He offered it for sale on the landing page but never on any other platform. Many domain names are registered at a premium higher than the price of USD 100 that he asked for the disputed domain name. The disputed domain name was available for registration on a first come-first serve basis. It is not the exclusive property of the trademark owner. The trademark owner did not take advantage of the sunrise registration period to prevent other parties from registering the disputed domain name. Many other domain names that contain “lamborghini” are still available but the Complainant has not registered them. Lamborghini is a personal name as well as a brand name. The Respondent can sell the disputed domain name to people of that name for USD 100. He can also sell it to someone who wants to start a site to exchange the Complainant’s products, or for a personal blog.
The Respondent offers the disputed domain name for sale to ordinary people, not trademark holders. He offered it for sale on the landing page for USD 100 but has since deleted it due to the Complaint. He did not offer it for sale on a German website. For ordinary people, the price of USD 100 to USD 1000 is completely acceptable. If the Respondent were trying to sell the disputed domain name to the Complainant, he would have asked for at least USD 10,000. The registration prices of the domain names <lamborghini.fans> and <lamborghini.love> are USD 9000 and USD 4800, respectively. The Respondent’s asking price of USD 100 exceeded his cost, because he is investing and needs to make money. The sales price must exceed the cost price otherwise the transaction cannot proceed and stay in business. The Respondent did not know of the Complainant’s English name "Lamborghini" before but he had heard of its Chinese name "兰博基尼" and knew that it was a luxury car brand. In China, the Chinese name is used with the Complainant’s products, not its English name. The Complainant’s luxury cars are a niche product, so few people know the Chinese name and almost nobody knows the English name as it is not a well-known trademark. The Respondent did not register the disputed domain name to damage the business of the Complainant; there is no mention of the Complainant or its competitors on the landing page. The disputed domain name is being used in good faith; it was available to the public for registration. If the Complainant can monopolize all lamborghini domain names, then there would be no purpose for all the new generic Top-Level Domain (“gTLD”) suffixes.
The Complainant has abused this procedure. It has already registered its trademark in the most popular gTLDs and now wants to prevent the growth of small businesses.
6.1 Procedural Issues
Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant is not familiar with Chinese and there is evidence that the Respondent understand Chinese, i.e. the disputed domain name is registered in Latin characters and the disputed domain name resolves to a landing page on which the seller introduces itself in English, even when the landing page is accessed in Chinese.
The Respondent requests that the language of the proceeding be Chinese. His main arguments are that the registration agreement for the disputed domain name is in Chinese, and the Respondent is Chinese and speaks only simple English and could not understand the Complaint without using Google Translate.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English, while the Response was filed in Chinese. The detailed content of the Response indicates that the Respondent has clearly understood the contents of the Complaint. The Panel understands both Parties’ submissions in their original versions. Therefore, the Panel considers that requiring the Complainant to translate the Complaint and amended Complaint into Chinese would create an undue burden and delay, whereas accepting all documents as filed will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents as filed, without a translation.
The Parties made unsolicited supplemental filings on August 5, 7, 11 and 14, 2020, after the filing of the Response but prior to the appointment of the Panel.
Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) of the Rules require the Panel to ensure that “each Party is given a fair opportunity to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the Policy is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Accordingly, the Panel will only permit the supplemental filings in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the amended Complaint.
The Panel observes that the first supplemental filing, made by the Complainant on August 5, 2020, refers to two annexes to the Complaint that were already on the record and alleges that two statements in the Response are unsubstantiated and implausible. The Complainant seeks to justify this supplemental filing on the basis that it clarifies some “untrue, unsubstantiated, obviously contradicting statements” in the Response. However, the Panel sees no exceptional circumstances that would justify accepting this supplemental filing.
All four supplemental filings constitute a chain of correspondence in which each Party responds to allegations made by the other Party in its previous filing. The Respondent does not offer any reason as to why the Panel should accept its supplemental filings of August 7 and 14, 2020. The Complainant, with its supplemental filing of August 11, 2020, seeks an opportunity to respond to new facts and serious allegations in the Respondent’s supplemental filing of August 7, 2020. Having declined to accept the first supplemental filing in this chain of correspondence, there is no reason to allow an opportunity to respond to it or later filings. For the above reasons, the Panel declines to accept the supplemental filings from both Parties.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the LAMBORGHINI trademark.
The disputed domain name wholly incorporates the LAMBORGHINI trademark. Its only additional element is a gTLD suffix (“.xyz”), which is a technical requirement of registration. A gTLD suffix may be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy, unless it has some impact beyond its technical function, which is not the case here. The trademark is clearly recognizable within the disputed domain name.
The Respondent argues that the disputed domain name will not be confused with the Complainant’s trademark for the following reasons: the trademark is registered in respect of particular goods; trademarks and domain names are used differently; and the content of the associated website makes no reference to the Complainant’s trademark.
The Panel recalls that the use made of a disputed domain name is not generally considered relevant for the purpose of the first element of the Policy, which involves a side-by-side comparison of the domain name and the textual components of the relevant trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; and Real Madrid Club de Futbol v. Lee Charles (黄登通), WIPO Case No. D2020-0540.
Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] 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 consumers or to tarnish the trademark or service mark at issue.
The Complainant submits that it has not authorized the Respondent to use the Complainant’s trademarks. There is no evidence that the Respondent holds any trademark rights. The Respondent uses the disputed domain name in connection with a landing page that formerly offered the disputed domain name for sale. The disputed domain name has since been deleted from the landing page. The Panel does not consider this to be a use of 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. Nor is it a legitimate noncommercial or fair use without intent for commercial gain within the meaning of paragraph 4(c)(iii) of the Policy.
The Respondent’s name is shown in the Registrar’s verification email as “Coco” and “黄登通”, not “Lamborghini”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The Panel notes that the nature of the disputed domain name (which is identical to the LAMBORGHINI trademark) carries a high risk of implied affiliation with the Complainant and its trademark. See WIPO Overview 3.0, section 2.5.1.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, he concedes that he does not intend to use the disputed domain name in connection with an offering of goods and services related to the disputed domain name. However, he argues that he can sell the disputed domain name to people named Lamborghini, or to someone who wants to start a site to exchange Lamborghinis, or for a personal blog. The Panel notes that the safe harbor provisions of paragraph 4(c)(ii) and (iii) of the Policy are available for persons who themselves are commonly known by the disputed domain name, or who themselves are making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent is not such a person. The safe harbor provisions of the Policy are not available for parties that have registered and are using a domain name for the purpose of reselling it to someone who might have a right or legitimate interest in respect of it.
The Respondent also argues that the trademark owner did not take advantage of the sunrise registration period to prevent other parties from registering the disputed domain name, and notes that other domain names containing “lamborghini” are still available for registration. The Panel does not consider that either of these circumstances shows that the Complainant has waived its rights to prevent bad faith registration and use of its trademark in a domain name. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;”
As regards registration, the disputed domain name was registered in 2020, many years after the Complainant registered its LAMBORGHINI trademark, including in China where the Respondent is resident. The disputed domain name is identical to that trademark, adding only a gTLD suffix. Lamborghini is not a dictionary word. The Complainant has made extensive and long-standing use of its LAMBORGHINI trademark. The Panel considers it very unlikely that the disputed domain name is identical to that trademark by coincidence. The Respondent submits that at the time he registered the disputed domain name, he knew only that "兰博基尼" (Pinyin: Lánbójīní) was a luxury car brand. However, in that case, the Respondent fails to explain why he chose to register “lamborghini” in the disputed domain name instead. In these circumstances, the Panel finds it very likely that the Respondent knew of the trademark at the time that he registered the disputed domain name.
As regards use, the disputed domain name resolves to a landing page that formerly offered the disputed domain name for sale and invited purchase bids. Although the evidence on the record does not show that the landing page displayed a sale price, the evidence supplied by the Complainant shows that the disputed domain name is offered for sale on another platform for EUR 130 while the Respondent submits that he offered the disputed domain name for sale for USD 100. In either scenario, the Panel considers that these prices are very likely to exceed the Respondent’s out-of-pocket costs directly related to the disputed domain name, particularly since the Respondent has not developed a website. In any case, the Respondent does not document any such costs. Moreover, the Respondent concedes that he offered the disputed domain name for sale at a price that exceeded his costs. The Respondent submits that the sale price is so low that he did not offer the disputed domain name for sale to the Complainant. However, the Panel notes that the disputed domain name was offered for sale to any Internet user, which could be the Complainant or a competitor of the Complainant. The Respondent submits that the sales price must exceed the cost price for it to be profitable. The Panel notes that in the circumstances of this case, it is for that very reason that this constitutes bad faith registration and use of a domain name within the terms of paragraph 4(b)(i) of the Policy. The Respondent points out that the content of the landing page makes no reference to the Complainant or its competitors. The Panel considers this circumstance irrelevant because the Respondent has targeted the value of the Complainant’s trademark by intending to sell the disputed domain name for commercial gain.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent alleges that the Complaint constitutes an abuse of process.
The Panel does not find that the Complaint was brought in bad faith or constitutes an abuse of process. On the contrary, the Panel has upheld the Complaint.
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 name <lamborghini.xyz> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: August 25, 2020