A WIPO sole panellist was asked last September to decide on the complaint filed by Automobili Lamborghini Holding S.p.A with the WIPO Arbitration and Mediation Center.

The complainant, Italian manufacturer of high performance sport cars, now wholly owned by Audi AG and the holding company of the Lamborghini Group, has rights in many countries in the Lamborghini marks which enjoy a worldwide reputation in relation to the above mentioned high priced sport cars.

The complaint concerned the registration of the domain name lamborghini.tv by respondent Unity 4 Humanity Inc. The latter asserted to be running a legitimate online business. According to the respondent, in particular, .tv is a qualifier in the market of on-line sharing of video clips and synonymous with the respondent itself and its business model. However, there were no substantial contents in the website such as commentaries, parodies or satires, to which the disputed domain name resolves which discuss or comment on Lamborghini’s company, products or services. On the contrary, the disputed domain name redirected the Internet traffic to respondent‘s domain real estate center. The content of the website hosted by the disputed domain name originated from respondent’s other website on which various services are offered in the areas of domain registration, hosting and website building. Also, on its website, respondent prominently advertised the tv channel of a car manufacturer that competes with Lamborghini.

Although the Panel accepted the respondent’s argument that Lamborghini is a common popular surname, it held that this does not negate the possibility of the surname acquiring a distinctive character through extensive factual usage. As the term .tv is not distinctive on its own, it followed that lamborghini.tv is to be held confusingly similar to the well-known Lamborghini mark.

The respondent did further not furnish any persuasive evidence indicating the use of the said domain name for any legitimate non-commercial or fair use purposes. The argument that there are no laws and time restrictions as to how long an entity must develop a Dot TV Channel for such fair use purposes is an untenable one.

In conclusion, the Panellist held that the disputed domain name had been registered in bad faith. In relation to the respondent’s requests for a finding against Lamborghini for reverse domain name hijacking, the Panel found that the respondent did not succeed in establishing that Lamborghini had engaged in such reverse domain name hijacking in respect of the disputed domain name. Consequently, the respondent was duly ordered to transfer to the famous carmaker.