By Steve Levy
Sports cars have a reputation for speed and so does the UDRP. As a stripped-down version of litigation, a UDRP claim can accomplish in less than three month what would take nearly a year, or possibly even more, through the courts.
In 2022, Automobili Lamborghini S.p.A. won a UDRP case against the domain name lambo.com claiming that the “Lambo” name is, itself, a well-known abbreviation for the Complainant’s famous trademark. The domain name resolved to a website offering it for sale at a price of EUR 25M. The Respondent, a domain name investor, claimed that “Lambo” also happens to be his nickname since he is known as the “Lamb of outlier generic aptitude and intelligence”. He further claimed that the word is used as a trademark by others in various fields of business unrelated to automobiles, that “lambo” is a word in the Greek language meaning “shine”, and that it is also the name of a large apelike, monkeyish, creature. In a very lengthy 18-page decision, a majority of the three-member panel found and that the Respondent’s claims were not credible due to a lack of supporting evidence and that his offering of the domain for sale at such a high price indicated his targeting of the Complainant’s trademark.
However, the decision involved a dissenting opinion by the third panelist who argued that the Complainant failed to submit sufficient evidence showing its use of the word Lambo as a trademark but, rather, that it relies on statements made by its lawyers. It found that the submitted evidence shows only Complainant’s use of the full LAMBORGHINI mark and noted that its U.S. trademark registration for LAMBO had expired (though other registrations for that mark remained viable). It also found that the Respondent presented at least some evidence that he is commonly known by the word “Lambo” and that the third-party uses of the word should be given more weight (e.g., Lambo is the name of an Australian wool product, the U.S. footballer Josh Lambo, the brand name of an allegedly rejuvenating cream, and a brand of vegetarian capsules, amongst others). As such, the Respondent’s offering the domain name for sale to the general public, regardless of the asking price, is legitimate within the bounds of activity for a domain name investor and does not show specific targeting of the Complainant’s mark.
The disparity of views amongst highly experienced UDRP panelists, signaled that this is not a clear-cut case and, in fact, the Respondent commenced action in an Arizona Federal Court to prevent a transfer of the domain name to the Complainant as ordered in the UDRP decision. In response, Lamborghini argue that the disputed domain name violates the Anti-Cybersquatting Consumer Protection Act (“ACPA”) and it filed a motion for summary judgment against the domain owner. In such motions, courts are to construe the evidence in the light most favorable to the non-moving party.
After setting out the ACPA factors for consideration, the court found that the domain owner failed to provide evidence that he adopted the nickname “Lambo” before purchasing the domain name and that his offering the domain name for sale was not in good faith. It also held that the term Lambo is “widely recognized by the general public in association with the world-famous automobiles” manufactured by Lamborghini and that the domain owner’s conduct is “indirectly extortionate because Lamborghini would have no other way to acquire the Disputed Domain besides forking over $75 million…” Interestingly, the domain owner claimed that he listed lambo.com for sale at an “unreasonably high price … to discourage prospective purchasers” but the court rejected this as defying all common sense and well-settled principles of law. If he had no intention of selling it, why would he list it for sale in the first place?
In the end, the court granted Lamborghini’s motion for summary judgment on October 16, 2024 and ordered a dismissal of the domain name owner’s case thus leaving the UDRP’s transfer order in place. As of this writing, the domain name does not appear to have been transferred to Lamborghini and the website still shows a for-sale page. However, it may just be a matter of time unless the domain owner files an appeal.
Despite the seeming complexity of this case, it appears to come down to the same old question of evidence. Unsupported fact claims simply don’t fly, either in UDRP or court proceedings. Disputing parties, especially those represented by lawyers, are expected to submit real, verifiable, and substantial proof to show that what they’re claiming is actually the state of reality. Anything less would leave UDRP and court proceedings open to the whims and biases of panelists and judges with the result that these processes themselves would lose credibility.