The Freename Forum

After domain investor Richard Blair lost the UDRP dispute over lambo.com in 2022, he sued the US civil courts for a declaration that he was the legitimate domain owner and that there was no right to transfer the domain to Automobili Lamborghini S.p.A.. Now, two years later, the judgment of the United States District Court for the District of Arizona has been handed down.

In UDRP proceedings brought by Automobili Lamborghini S.p.A against the owner of the domain lambo.com, the complainant was successful before the WIPO: the three-judge panel found that the three elements of the UDRP were predominantly fulfilled and ruled that the domain should be transferred. Panelist Neil Anthony Brown took a different view and explained it in nine pages. Nonetheless, the decision to transfer the domain applied. The opponent, US domain investor Richard Blair, appealed the decision by filing a lawsuit with the civil courts on August 24, 2022. He argued that the UDRP decision was wrong and sought a declaration that he did not wrongfully hold and use the domain under the Anticybersquatting Consumer Protection Act (ACPA) and therefore did not have to transfer it to the complainant. Among other things, he argued that after buying the domain lamborghini.com in 2018 for US$ 10,000, he was active under the nickname “Lambo”. He had bought the domain for a project that he had put on hold in order to devote himself to a project that he then wanted to report on in a web blog at lambo.com. He did not know at the time that Lamborghini had a corresponding trademark. The term “Lambo” is used by many in a way that does not infringe trademark rights. He had offered lambo.com for sale from a certain point in time, but never wanted to sell the domain, which is why he quoted exorbitant prices at which nobody would buy. When offers to buy the domain were received, he always rejected them. He never intended to participate in the rights of Automobili Lamborghini S.p.A. with the domain. The defendant Automobili Lamborghini S.p.A countered the action and tried to make it clear with its submission that the plaintiff was using the lambo.com domain without authorization. In particular, the defendant emphasized that the domain lambo.com had been offered for sale over the years and that its price had continued to rise - most recently to US$ 75 million.

After two years, the judgment of the United States District Court for the District of Arizona is now available. Judge Roslyn O. Silver dismissed the lawsuit and confirmed the previous UDRP decision (Order from 16th day of October, 2024, No. CV-22-01439-PHX-ROS). It narrowed the decision to the question of whether the plaintiff could be accused of cybersquatting infringement under the ACPA: To do so, the trademark owner had to prove that the domain owner registered, traded or used a domain, that the domain is identical or confusingly similar to the owner's protected trademark, and that the domain owner acted in bad faith to profit from that trademark. Since the Complainant admits that it is the current domain owner, the mark “LAMBORGHINI” was distinctive both before the original registration of the domain lambo.com and at the time the Complainant acquired the domain, and lambo.com is confusingly similar to the mark, the only remaining question is whether the Complainant acted in bad faith to profit from the mark. The ACPA lists nine non-exhaustive factors for assessing bad faith, which Silver went through. These factors include whether the domain owner holds trademark or other rights, uses the domain name for personal identification, uses the domain in good faith for non-commercial purposes, has false contact information, or holds other trademark infringing domains. Silver reviewed these nine factors and found that only two points were in the plaintiff's favor: There would be no evidence of false contact information and no evidence of other trademark infringing domains held by the plaintiff. But everything else was against him: while it may be true that Plaintiff originally acquired lambo.com for bona fide reasons to expand its domain portfolio and develop the website into a blog, and that it has no history of cybersquatting, any reasonable trier of fact could only conclude that its past actions with respect to the lambo.com domain were done in bad faith to profit from Lamborghini's goodwill. Silver further states that the “LAMBORGHINI” mark is world famous and the plaintiff acknowledged that “LAMBO” is confusingly similar to it, and further noted that the general public does not exclusively associate “LAMBO” with “LAMBORGHINI”; however, it is clear that the strong association of “LAMBO” with “LAMBORGHINI” by the public is the most enticing reason for a potential buyer to purchase the domain. Therefore, the court dismissed the plaintiff's claim in its entirety and without prejudice.

You can find Richard Blair's statement of claim at:
https://storage.courtlistener.com/recap ... 73.1.0.pdf

Das Urteil des „United States District Court for the District Of Arizona“ finden Sie unter:
https://domainnamewire.com/wp-content/lambo-summary.pdf

The UDRP decision on the domain lambo.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 2-1570.pdf