Lambo.com Transferred to Lamborghini, with Strong Dissenting Opinion

In this week’s edition of the UDRP digest we are taking a closer look at some recent noteworthy decisions:

‣ Lambo.com Transferred to Lamborghini, with Strong Dissenting Opinion (Lambo .com)
‣ Travel Company Attempts to Hijack! (FlyGo .com)
‣ Similarity Test Does Not Involve Examination of Website Content (D9thcCarts .com)
‣ Complainant’s Obligation to Provide at Least Minimum Information (MicroEdge .net)
‣ Does a Registered Business Name Demonstrate Trademark Rights? (StudioAutobody .com)

We hope you enjoy yet another intriguing Digest!

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org
/ Richard Blair, WIPO Case No. D2022-1570

<Lambo .com>

Panelist: Mr. Antony Gold (Presiding), Mr. Matthew S. Harris, and The Hon Neil Brown Q.C.

Brief Facts: The Italian Complainant, founded in 1963, is a manufacturer of high- performance sports cars, trading under the brand, LAMBORGHINI. A commonly used abbreviation, “Lambo”, is also registered as a European Union Trade Mark, since 2008. The disputed Domain Name was acquired by the Respondent on or after February 28, 2018 and until recently resolved to a web page at which it was offered for sale at a price of EUR 25,000,000 or to lease at a monthly price of EUR 541,667. However, currently the disputed Domain Name redirects to a discussion group on the NamePros website, which contains content in which the Respondent protests the Complainant’s action in bringing the Complaint.

The Complainant contends its marks, including its LAMBO mark, are famous and have a strong reputation around the world, including in the United States, and the Respondent obviously had actual knowledge of the Complainant’s LAMBO mark when acquiring the disputed Domain Name and intends to sell, rent or otherwise transfer in excess of the Respondent’s documented out of pocket costs. The Respondent contends that he deals in and develops domain names and is known as “Lambo” on the Internet and in real life. The Respondent also claims that other “Lambos” exist as names, nicknames and companies and that it is a generic term with myriad applications across both commercial and non-commercial fields in a number of different jurisdictions.

Held: The disputed Domain Name is offered for sale with a leasing alternative and more recently, to redirect to a third party discussion forum. Neither of these uses amounts to use in connection with a bona-fide offering of goods and services. However, the Complainant did not assert that it is making direct use of its LAMBO mark as a brand name for any of its goods or services. Therefore, the majority panel conducted a Google search, which establishes that “Lambo” is widely used by enthusiasts and fans of the Complainant’s products, as well as by car dealerships, as an abbreviation for the Complainant’s vehicles. Further the majority of the Panel, having not accepted the Respondent’s claim to be commonly known by the disputed Domain Name, believes that there is no credible explanation on the record for the Respondent’s registration of it and the Panel necessarily seek to infer the Respondent’s likely motive from the circumstances. According to the majority of the Panel, it would be inappropriate to invite the Respondent to file additional evidence, and concludes that the Respondent did not establish that he is commonly known by the disputed Domain Name.

In considering the Respondent’s intentions in registering the disputed Domain Name the Majority Panel takes into account the following facts: a) the Respondent did not suggest that he intended to use the disputed Domain Name himself, nor is there any evidence that he attempted to do so; b) the Respondent did not claim that he was unaware of either the Complainant or its use of “Lambo” to denote its vehicles as at the date of registration of the disputed Domain Name; c) the very high prices at which the disputed Domain Name was offered for sale is clearly indicative of the Respondent’s belief that a company might be willing to pay a sum approximating or approaching the exceptionally high sum sought by the Respondent and the very high asking price for the disputed Domain Name tends to affirm the likelihood of targeting by the Respondent.

Dissenting Opinion: This Panelist would dismiss the Complaint for the following reasons. The LAMBO mark is the Complainant’s orphan child, not in practical use. That is, the Complainant does not use LAMBO to identify its motor vehicles and is clearly not interested in using it for that purpose. Moreover, the Complaint does not reveal that the Complainant once had a USPTO trademark for LAMBO in the United States but it abandoned that trademark on August 11, 2017, five months before the Respondent acquired the disputed Domain Name. The Domain Name is the property of the Respondent and his ownership should be respected. He is in his right to sell it, at the price he is asking and at the price he thinks he can obtain. It would be a very bold decision to declare in effect that a person who bought a domain name and not engaged in any conduct that could be regarded as a breach of the UDRP, should be deprived of its own property simply for retaining a Domain Name.

The Respondent also presented an arguable case that he is commonly known by the domain name and he therefore has a right or legitimate interest in the domain name. However, the Respondent was not provided an opportunity to clarify some of his evidence. The result is that the evidence has been left in an unsatisfactory state which is prejudicial to the Respondent but could so easily be rectified. It also potentially runs foul of the duty of the panel to ensure that the parties are treated equally and that each party is given a fair opportunity to present its case. This Panelist would therefore not agree to order the transfer of the domain name to the Complainant while that issue remains unresolved and yet could be resolved by a procedural order that would clarify and expand the evidence.

Lastly, nor the Respondent committed any act that amounts to bad faith in either the registration or the use of the Domain Name. The Complainant does not allege that the Respondent acquired the Domain Name to sell it to the Complainant itself, rather the Complainant alleges that the Respondent bought the Domain Name to sell it to a competitor of Lamborghini. The Panel should reject this allegation, being nonsensical and lacking evidence. The only evidence is that the Respondent advertised the domain name for sale, not to Lamborghini, or to a competitor of Lamborghini, but to the world at large on the general market. That is not prohibited and is not proscribed by any provision of the UDRP. If merely offering a domain name for sale to the public is held to be bad faith, virtually all sales of domain names would be prohibited, which was clearly not intended. Moreover, the Complainant’s case is strangely silent on the issue of use in bad faith which it must prove.

Transfer

Complainants’ Counsel: HK2 Rechtsanwälte, Germany
Respondents’ Counsel: Self-represented

Travel Company Attempts to Hijack!

Fly Go Voyager SRL v. Clive Marshall, WIPO Case No. D2022-2162

<FlyGo .com>

Panelist: Mr. Luca Barbero

Brief Facts: The Romanian Complainant, established in 2005, provides services in the field of travel agencies, offering flight, city break, cars, and hotels booking services. It operates a website under the domain name <fly-go .ro>, registered on March 4, 2009. The Complainant owns trademarks consisting of, or comprising FLY GO, in few European Jurisdictions since 2015. The disputed Domain Name <flygo .com> was registered on May 3, 1999, and currently points to a website offering the disputed Domain Name on sale for USD $19,995.

The Complainant alleges that the Respondent does not own any trademark rights for FLY GO and there is no evidence that the Respondent is using the disputed Domain Name to provide any goods or services to the public. The Respondent states that he registered the disputed Domain Name in 1999 and used it as an Expedia affiliate. The Respondent further asserts that the Complainant’s intention is solely to obtain the disputed Domain Name by putting pressure to release it for its future use and highlights that, should the Complainant wish to acquire the disputed Domain Name, the Respondent would consider the offer.

Held: The evidence on records evidences that the disputed Domain Name was registered several years before the Complainant was founded in 2005 and first entered into business. In addition, the Complainant’s trademark registrations for FLY GO on which the Complainant relies were filed only as of June 2015, and the domain name <fly-go .ro> used by the Complainant for its main website was registered in 2009. Therefore, the Respondent could not have possibly been aware of the Complainant and its trademarks at the time of the registration of the disputed Domain Name.

The Panel also finds that there is no element in this case that demonstrates that the Respondent intended to target the Complainant and its trademark through the use of the disputed Domain Name, which is pointed to a website where no reference is made to the Complainant. In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed Domain Name in bad faith.

RDNH: The Complainant is represented by counsel and knew the registration date when filing the Complaint and did not allege a later acquisition by the Respondent, the Panel considers that a finding of RDNH is appropriate.

Complaint Denied (RDNH)

Complainants’ Counsel: Suciu & Asociații, Romania
Respondents’ Counsel: Self-represented

Similarity Test Does Not Involve Examination of Website Content

Delta 9 Bio-Tech Inc. v. N Trading BV, CIIDRC Case Number: 17880- UDRP

<D9thcCarts .com>

Panelist: Mr. James Plotkin

Brief Facts: The Complainant, founded in 2012, is a wholly-owned subsidiary of Delta 9 Cannabis Inc. and is a licensed producer of medical and recreational cannabis and cannabis derivatives across Canada. The Complainant operates through the website at <delta9 .ca> and owns a number of trademarks registered with the CIPO that include DELTA 9 as part of the mark. The Complainant alleges that the Respondent is using the disputed Domain Name to pass itself off as the Complainant by copying the text and visual content and provides evidence as to Respondent’s use of the Complainant’s trademark and sale of identical products. The Respondent did not file the Response.

Held: The Complainant concedes none of its marks are identical to the disputed Domain Name and further adduced no evidence suggesting it is commonly known as “D9”, or that it owns registered or unregistered rights in “D9”. The Complainant rather urges the Panel to have regard to the content of the Respondent website to buttress a finding that the Domain Name is confusingly similar. The Panel declines to do so here. Although Panels have occasionally considered the content of a website hosted at an impugned domain name under the first UDRP prong, the weight of authority holds this is generally inappropriate. The Respondent’s website’s content is rather relevant in assessing the second and third prongs, the Panel will disregard that content for the purpose of assessing identity/confusing similarity under the first prong.

The Panel notes this was a difficult decision. Had the analysis under UDRP paragraph 4(a)(i) entailed considering other elements common to trademark infringement confusion analyses, such as similarity between the nature of the goods or services and channels of trade, the outcome might well have been different. However, undertaking a side by-side, alphanumeric comparison of the Complainant’s marks and the Domain Name, the Panel concludes they are not confusingly similar. Finally, the constraints on the Panel under the UDRP requiring it to conduct only an alphanumeric comparison should not be taken as an opinion on the Complainant’s prospects of success in suing for trademark infringement or passing off, which implies a different and more detailed analysis.

Complaint Denied

Complainants’ Counsel: Lorraine Pinsent, MLT Aikens LLP
Respondents’ Counsel: No Response

Complainant’s Obligation to Provide at Least Minimum Information

Blackbaud, Inc. v. 李西美 (li ximei), WIPO Case No. D2022-1815

<MicroEdge .net>

Panelist: Ms. Sok Ling MOI

Brief Facts: The Complainant, founded in 1981, is a cloud software company providing cloud software services, data intelligence services and other IT solutions. The Complainant owns <microedge .com>, which is redirected to its website at <blackbaud .com>. The Complainant claims that it owns the trademark registration for MICROEDGE in the United States through its legal subsidiary, MicroEdge, LLC. The disputed Domain Name was registered on March 18, 2022 and does not resolve to any active website. The Respondent owns more domain names which incorporate the word ‘Edge’ and also makes use of similar email IDs.

The Complainant alleges that given that the disputed Domain Name is passively held without any demonstrated legitimate uses, there is a possibility that the disputed Domain Name could be exploited to mount effective phishing attacks or launch scam campaigns against the Complainant’s employees or clients. The Respondent contends that her interest in “edge computing” led to the registration of the disputed Domain Name, she was not aware of the existence of the Complainant nor its trademark, as evident from the Baidu Internet search results for “micro edge”. The Respondent further contends that the website to which the disputed Domain Name resolves does not contain any commercial links or advertisement to mislead Internet users, nor has the Respondent done anything to disrupt the Complainant’s business operations.

Held: The Complainant submits a detailed Purchase Agreement document dated August 30, 2014 as evidence to prove that ‘MicroEdge, LLC’ is its legal subsidiary. However, according to the trademark information submitted by the Complainant, the United States trademark registration is in the name of ‘MicroEdge, Inc.’, a different entity. Basic information pertaining to the Complainant’s trade mark rights should have been clearly included in the Complaint and the Panel should not be obliged to review complicated sale and purchase agreements or to undertake independent investigations to plug the information gap. Failure to provide the basic information to meet the minimum UDRP evidentiary proof would be solely at the party’s choice and risk. Accordingly, the Panel finds that the Complainant did not satisfy the requirements of the first element. Similarly, the Respondent did not provide evidence such as WhoIs records to show that she indeed registered the string of domain names mentioned. Again, the Panel is entitled to, but is not obliged to undertake independent investigations to plug the information gap to upheld legitimate interests.

Further, in addition to the lack of evidence of the use of the MICROEDGE mark by the Complainant, the Panel did not see the use of MICROEDGE as a trade mark on the main page of the Complainant’s main website. The Panel can tell from the evidence submitted, the Complainant did not substantially use the MICROEDGE mark after its acquisition. The Panel accepts the Respondent’s contention (supported with Baidu Internet search results) that the Complainant’s trademark MICROEDGE does not appear to be well-known nor does it enjoy a strong Internet presence. No presumption could be made that the Respondent was aware of the Complainant or its trade mark, and was targeting the Complainant, when she registered the disputed Domain Name. Consequently, the Panel finds that the Complainant is unable to prove, on a balance of probabilities, that the Respondent has registered and is using the disputed Domain Name in bad faith.

Complaint Denied

Complainants’ Counsel: Soteria LLC, United States
Respondents’ Counsel: Self-represented

Does a Registered Business Name Demonstrate Trademark Rights?

Studio Auto Body Inc v. Kyle Grant / Studio Auto Body, Inc., NAF Claim Number: FA2207002003226

<StudioAutobody .com>

Panelist: Mr. Alan L. Limbury

Brief Facts: The business Studio Auto Body Inc. was started on January 01, 2012 and incorporated on April 01, 2012. The Complainant does not own any trademark or common law rights but mainly alleges that the disputed Domain Name is an exact replica of Complainant’s registered business name and is not in use for publication of a website. The Complainant further alleges that the disputed Domain Name was originally purchased by the Respondent upon the Complainant’s instructions. At the time of termination of the business relationship, the Respondent refused to transfer the Domain Name to the Complainant.

Held: The Complainant does not assert nor demonstrate that it has any registered or common law rights in a trademark or service mark. Its Articles of Incorporation and General Excise Tax License are insufficient to establish that it does. The prior UDRP precedents do not support a finding of common law rights in the mark in lieu of any supporting evidence, statements or proof, e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications. Moreover, having regard to the Complainant’s assertion that the disputed Domain Name was originally purchased by the registrant upon the direction of the Complainant, the Panel finds that the disputed Domain Name was registered in good faith. The Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Complaint Denied

Complainants’ Counsel: Jeramiah Becker of Maui Tech Solutions LLC, Hawaii, USA
Respondents’ Counsel: No Response