UDRP Lambo.com: Following UDRP loss, Respondent files lawsuit against Lamborghini

[News]

Lamborghini S.p.A. won the UDRP it filed against the domain Lambo.com; now the Respondent and registrant of the domain is hitting back with a lawsuit.

The case between Richard Blair, plaintiff, and Automobili Lamborghini S.p.A, defendant, refers to the Lambo.com domain’s acquisition as a follow-up to adopting that moniker (Lambo) as a private alias for activities in various online communities...

Read More

 

[Samer]

I always liked Ferrari more. (NYSE: RACE)

 

[jberryhill]

Do Lamborghini's lawyers get paid for this

 

[jberryhill]

Plaintiff's sur-reply to the defendant's response to plaintiff's motion for sanctions has been filed:

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.28.0.pdf

"- no court has ever held that only the original registrant of a domain
name may seek declaratory relief under 15 U.S.C. 1114(2)(D)(v);

- in the 24 years since the enactment of the Anticybersquatting
Consumer Protection Act, 15 U.S.C. 1125(d) (“ACPA”), no party has
even argued that only the original registrant of a domain name may
seek declaratory relief under 15 U.S.C. 1114(2)(D)(v);

- it has long been settled that a respondent to a UDRP proceeding has
the right to file an action in federal court seeking a de novo review of
the lawfulness of the registration and use of a domain name"

Just backing up a moment procedurally, there are two things currently going on in the case:

1. Defendant's Motion to Dismiss - this is the motion in which Lamborghini argues that a buyer of a domain name is not a "registrant" of the domain name within the meaning of the applicable law.

2. Plaintiff's Motion for Sanctions - this is the motion in which Blair argues that #1 is so stupid, that Lamborghini should have to pay the fees for dealing with it.

While these things are certainly entertaining, the state of play right now is an effort to keep the case from being dismissed. In all likelihood, the case will not be dismissed, and then, what are we.. a year into this from the UDRP?... the defendant will be required to file its answer and counterclaims in response to the complaint filed last August, absent the parties reaching a settlement of some kind.

In other words, resolution of the two pending motions is not likely to have much bearing on the overall outcome. These motions are simply a procedural skirmish along the way.

 

[jberryhill]

The US District Court for the District of Arizona has denied Lamborghini's motion to dismiss the Lambo.com post-UDRP suit, and has further dismissed the domain registrant's motion for sanctions, stating:

"In response to Lamborghini’s motion to dismiss, Blair filed a motion for sanctions
pursuant to Federal Rule of Civil Procedure 11. Blair argues Lamborghini’s interpretation
of “domain name registrant” is sanctionable as evidenced by the fact that no other litigant
has ever argued a claim under § 1114 may only be brought by the initial domain name
registrant. Blair may be correct that Lamborghini’s argument has not been litigated before
but, in this case, that novelty does not merit sanctions.

The Ninth Circuit’s GoPets decision provided a sufficient basis for Lamborghini to
argue its proposed definition of “domain name registrant.” However, the reasoning in
GoPets regarding the need to interpret ACPA in line with traditional principles of property
rights significantly undercut Lamborghini’s position. In these circumstances, neither Blair
nor Lamborghini is entitled to sanctions."

I cannot provide a link to the decision at this time, since the Arizona PACER system seems to have gone sideways this morning. That said, it's a ten pager which painstakingly addresses what was a fairly silly argument.

However, as the District of Arizona more adamantly insists that priority in a domain name registration succeeds to a subsequent purchaser, one might want to reconsider the habitual practice of choosing the "registrar" as the location of the Mutual Jurisdiction in situations where one is filing a UDRP against a US resident outside of the Ninth Circuit who might be liable to litigate:

"Lamborghini’s proposed interpretation would also undercut a central rationale for
the result in GoPets. As mentioned, GoPets held it was important to interpret the term
“registration” in § 1125 to ensure domain names remained freely alienable. Thus, the
company that “reregistered” gopets.com was entitled to rely on the fact the GoPets mark
was not distinctive at the time of the initial registration. Holding otherwise would have
meant the initial registrant’s “rights in their domain name . . . would evaporate, at least
practically if not legally” because “no one would buy rights to a domain name that would
be rendered subject to a cybersquatting lawsuit upon the transfer.” Mehdiyev v. Qatar Nat’l
Tourism Council, 532 F. Supp. 3d 1065, 1071 (D. Colo. 2021) (interpreting GoPets)."

For those who watch legal dramas on television and are used to these things wrapping up in 50 minutes with time for some commercials, it is also worth observing that this case was filed in August 2022 and is approaching its first anniversary. What has been accomplished thus far is essentially nothing. Lamborghini tried to have the case dismissed, and was unsuccessful. Blair attempted to have Lamborghini sanctioned, and was unsuccessful.

So procedurally, the case is back at square one. Absent settlement, Lamborghini should proceed to finally answer the complaint (i.e. to admit or deny the various factual contentions of the complaint) and to allege counterclaims against Blair for cybersquatting. In the event that Lamborghini decides to pursue counterclaims, and there is no reason why they wouldn't, then Mr. Blair will be playing for real money, other than what has already been spent on legal fees to pursue the case, and cannot simply walk away from the table.

While it would have been nice to obtain sanctions, they are rare.

The substantive score thus far is a tie at Blair 1 (for defeating the motion to dismiss) - Lamborghini 1 (for winning the UDRP).

The bonus round awaits.

 

[Mize]

@jberryhill Who should get the domain?

 

[jberryhill]

@jberryhill Who should get the domain?

The winner.

 

[jberryhill]

Maybe I should expand on that answer a bit.

The full decision on the motion to dismiss and sanctions is here:

https://www.courtlistener.com/docket/64919795/blair-v-automobili-lamborghini-spa/

First, it's important to realize that most civil lawsuits settle. In all likelihood, there will be no winner. If the parties reach a private agreement of some kind, they will then file a dismissal of the case with the court and we will typically not know on what terms that may have happened. So, the most likely outcome is that whomever ends up with the domain name will be whomever the parties agree to have it. The settlement may be confidential, so we will not know its terms. Typically, if the parties agree on a transfer of the domain name, then the trademark claimant will likely insist that the domain registrant discontinue any use of the claimed mark.

Secondly, trademark disputes tend to be fact-intensive. On top of that, the ACPA hinges on intent. That can make it difficult to prevail on summary judgment - i.e. a pre-trial judgment in which all of the parties agree on the facts and so the disagreement is essentially about how the law applies to them - because it can be difficult to prove intent directly. One of the functions of juries is to assess credibility of witnesses, so a lot can depend on how a witness comes across to a jury.

The arguments along the lines of "there's a bunch of businesses/people using that name" are helpful, but do not constitute an entire defense. There can be a dozen different owners of a trademark for "EXAMPLE", but if a jury can infer on the evidence that I had one of them in particular in mind, then it doesn't really matter how many others there are. In other words, if I had intended to register the domain name with an idea that I would profit from one of those dozen trademark owners in particular, then that trademark owner has a cybersquatting claim against me.

But the notion that the domain name has value because it is multiply used, a surname, etc., aren't really relevant to what the stated reasons were for acquiring the name anyway. The defendant (Lamborghini) already has a wealth of direct statements from the plaintiff to use as evidence, since the UDRP was self-defended. The UDRP was defended on the basis of "Lambo" being a name by which the domain registrant is commonly known. As indicated in the UDRP decision:

---

The Respondent is known as “Lambo” on the Internet and in real life and has a history of dealing in, and developing, domain names. The Respondent has an established online footprint as “Lambo” and is known in online communities and in a personal capacity as “Lambo”. Specifically, “Lambo” is of repute and regard in NamePros, which is a million member online community, as well as on other online platforms, including the Darwinia Network and Evolution Land. The Respondent is a “Lamb of outlier generic aptitude and intelligence” and this is apparent from a logo and iconography for his online footprint.

In support of his contention that he is commonly known by the disputed domain name, the Respondent refers to “unsolicited organic testimonials”. These take the form of two posts from participants to an online chat on the NamePros platform which assert, in response to what appears to be a comment in relation to the Complaint, that the Respondent has been known as “Lambo” on the forum, for some time.

[...]

The disputed domain name has not been registered or used in bad faith; ““Lambo” is my name and “I am Lambo”“. Whilst the Complainant has sought to draw inferences from the fact that the disputed domain name has been offered for sale on third party platforms at varying prices, prospective buyers would have been unable to acquire the disputed domain name at those prices. “The beauty is in the eye of the beholder and as the outlier Lamb par excellence, is all but priceless to me. And that is all that matters”.

---

It's not clear how much or exactly what evidence was used by the Respondent to establish the "commonly known as" defense. Two of the three panelists did not find anything that suggested the Respondent having been known as "Lambo" prior to acquiring the domain name:

---

The Respondent’s evidence, however, does not shed any light on the specific period of time for which the Respondent has referred to himself as “Lambo” on the forum and, in particular on whether he did so prior to his acquisition of the disputed domain name or only after he acquired it. This is an important consideration because if, as the Complainant alleges, the Respondent had the Complainant in mind as a prospective purchaser of the disputed domain name as at the date of his acquisition of it, then calling himself “Lambo” on the forum may have been part of a strategy intended to suggest an interest on his part in the disputed domain name in the event of challenge by the Complainant. Furthermore, the Respondent has not provided any evidence at all to support his contentions that he is known by the name “Lambo” both in other online communities and “in real life”.

The Respondent has asserted also that he is a “Lamb of outlier generic aptitude and intelligence”. What this means, is unclear but, whatever meaning is intended by this contention, it is a statement made without any evidential support.

The evidence to support the assertion that the Respondent is commonly known as Lambo is therefore confined to the Respondent having called himself “Lambo” for an unknown period of time on the NamePros online community, with nothing to suggest that he had been calling himself “Lambo” on the forum prior to his acquisition of the disputed domain name, nor, in fact, does the Respondent even specifically assert that this was the case.

---

Obviously, it's one thing to have a nickname and then set off to obtain the domain name corresponding to that nickname, and it is another thing to acquire a domain name and then claim it as a nickname. One could justify any domain name on latter basis merely by registering SamsungElectronics.tld and then saying "it's my nickname."

But, the case was self-defended by someone who apparently thinks quite highly of himself, and didn't realize that the panelists might have wanted to see more in the way of pre-domain-acquisition evidence of use of the domain name. The dissenting panelist believed the Respondent, not represented by a lawyer, should have been given the opportunity to clarify whether the nickname preceded the domain name or the other way around. The dissenting Panelist would have requested more evidence:

---

In support, the Respondent has tendered in evidence some testimonials from acquaintances to the effect that he was known as Lambo, which go some way, but only some way, to verifying his position and although they are limited in number, he has certified that his submission is “complete and accurate.” His evidence was not entirely clear, as it did not have the professional gloss that was apparent from the Complainant’s case that was clearly prepared by a lawyer, which puts the Respondent at an obvious disadvantage. It therefore should be remembered that the Respondent is not represented by counsel and is opposed by obviously significant professional representation. There is an obligation on panels under Rule 10 to “ensure” that the parties are treated with equality and that each party has a fair opportunity to present its case, and this must be particularly so when a party is not represented.

...

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. The Respondent seems to this panelist to have been denied that opportunity, which compromises his due process rights.

---

Had that happened, things may have proceeded differently. However, old Namepros posts aren't going to be of much use, since changing your username on Namepros will change your name on all of your old posts. You can see that in action here:

So, while there is a "lambo.com" post from December 2017, you can see that where it is quoted later in the thread, the original username at that time is reflected in the quote block. Additionally, if you look at old threads on Archive.org, the then-current username is preserved:

But, in any event the Complaint, which was written and filed by an attorney, seems to put that question to bed:

It's hard to tell, absent access to the actual UDRP filings themselves, the centrality of the "commonly known as" defense in the UDRP proceeding. If the Response attempted to imply that the nickname existed before acquisition of the domain name, then that is something the defendant will use to undermine credibility.

One person you don't want to be in this thing is one of the folks who submitted "some testimonials from acquaintances," since their further testimony on how their testimonials came to be will be of interest.

In any event, the dissenting UDRP panelist's position was that the evidence was unclear, and insufficient to compel a result on behalf of the Complainant, who bears the burden of proving its case.

We in the peanut gallery have less access to any reliable evidence than the UDRP panel had. In a UDRP proceeding, there is no way to compel the production of evidence, but there certainly is in a court proceeding. So, however this thing moves forward, the parties and the court are ultimately going to have a lot more evidence on which to make decisions than the UDRP panel, or certainly anyone at Namepros.

 

[Mize]

Maybe I should expand on that answer a bit.

The full decision on the motion to dismiss and sanctions is here:

https://www.courtlistener.com/docket/64919795/blair-v-automobili-lamborghini-spa/

First, it's important to realize that most civil lawsuits settle. In all likelihood, there will be no winner. If the parties reach a private agreement of some kind, they will then file a dismissal of the case with the court and we will typically not know on what terms that may have happened. So, the most likely outcome is that whomever ends up with the domain name will be whomever the parties agree to have it. The settlement may be confidential, so we will not know its terms. Typically, if the parties agree on a transfer of the domain name, then the trademark claimant will likely insist that the domain registrant discontinue any use of the claimed mark.

Secondly, trademark disputes tend to be fact-intensive. On top of that, the ACPA hinges on intent. That can make it difficult to prevail on summary judgment - i.e. a pre-trial judgment in which all of the parties agree on the facts and so the disagreement is essentially about how the law applies to them - because it can be difficult to prove intent directly. One of the functions of juries is to assess credibility of witnesses, so a lot can depend on how a witness comes across to a jury.

The arguments along the lines of "there's a bunch of businesses/people using that name" are helpful, but do not constitute an entire defense. There can be a dozen different owners of a trademark for "EXAMPLE", but if a jury can infer on the evidence that I had one of them in particular in mind, then it doesn't really matter how many others there are. In other words, if I had intended to register the domain name with an idea that I would profit from one of those dozen trademark owners in particular, then that trademark owner has a cybersquatting claim against me.

But the notion that the domain name has value because it is multiply used, a surname, etc., aren't really relevant to what the stated reasons were for acquiring the name anyway. The defendant (Lamborghini) already has a wealth of direct statements from the plaintiff to use as evidence, since the UDRP was self-defended. The UDRP was defended on the basis of "Lambo" being a name by which the domain registrant is commonly known. As indicated in the UDRP decision:

---

The Respondent is known as “Lambo” on the Internet and in real life and has a history of dealing in, and developing, domain names. The Respondent has an established online footprint as “Lambo” and is known in online communities and in a personal capacity as “Lambo”. Specifically, “Lambo” is of repute and regard in NamePros, which is a million member online community, as well as on other online platforms, including the Darwinia Network and Evolution Land. The Respondent is a “Lamb of outlier generic aptitude and intelligence” and this is apparent from a logo and iconography for his online footprint.

In support of his contention that he is commonly known by the disputed domain name, the Respondent refers to “unsolicited organic testimonials”. These take the form of two posts from participants to an online chat on the NamePros platform which assert, in response to what appears to be a comment in relation to the Complaint, that the Respondent has been known as “Lambo” on the forum, for some time.

[...]

The disputed domain name has not been registered or used in bad faith; ““Lambo” is my name and “I am Lambo”“. Whilst the Complainant has sought to draw inferences from the fact that the disputed domain name has been offered for sale on third party platforms at varying prices, prospective buyers would have been unable to acquire the disputed domain name at those prices. “The beauty is in the eye of the beholder and as the outlier Lamb par excellence, is all but priceless to me. And that is all that matters”.

---

It's not clear how much or exactly what evidence was used by the Respondent to establish the "commonly known as" defense. Two of the three panelists did not find anything that suggested the Respondent having been known as "Lambo" prior to acquiring the domain name:

---

The Respondent’s evidence, however, does not shed any light on the specific period of time for which the Respondent has referred to himself as “Lambo” on the forum and, in particular on whether he did so prior to his acquisition of the disputed domain name or only after he acquired it. This is an important consideration because if, as the Complainant alleges, the Respondent had the Complainant in mind as a prospective purchaser of the disputed domain name as at the date of his acquisition of it, then calling himself “Lambo” on the forum may have been part of a strategy intended to suggest an interest on his part in the disputed domain name in the event of challenge by the Complainant. Furthermore, the Respondent has not provided any evidence at all to support his contentions that he is known by the name “Lambo” both in other online communities and “in real life”.

The Respondent has asserted also that he is a “Lamb of outlier generic aptitude and intelligence”. What this means, is unclear but, whatever meaning is intended by this contention, it is a statement made without any evidential support.

The evidence to support the assertion that the Respondent is commonly known as Lambo is therefore confined to the Respondent having called himself “Lambo” for an unknown period of time on the NamePros online community, with nothing to suggest that he had been calling himself “Lambo” on the forum prior to his acquisition of the disputed domain name, nor, in fact, does the Respondent even specifically assert that this was the case.

---

Obviously, it's one thing to have a nickname and then set off to obtain the domain name corresponding to that nickname, and it is another thing to acquire a domain name and then claim it as a nickname. One could justify any domain name on latter basis merely by registering SamsungElectronics.tld and then saying "it's my nickname."

But, the case was self-defended by someone who apparently thinks quite highly of himself, and didn't realize that the panelists might have wanted to see more in the way of pre-domain-acquisition evidence of use of the domain name. The dissenting panelist believed the Respondent, not represented by a lawyer, should have been given the opportunity to clarify whether the nickname preceded the domain name or the other way around. The dissenting Panelist would have requested more evidence:

---

In support, the Respondent has tendered in evidence some testimonials from acquaintances to the effect that he was known as Lambo, which go some way, but only some way, to verifying his position and although they are limited in number, he has certified that his submission is “complete and accurate.” His evidence was not entirely clear, as it did not have the professional gloss that was apparent from the Complainant’s case that was clearly prepared by a lawyer, which puts the Respondent at an obvious disadvantage. It therefore should be remembered that the Respondent is not represented by counsel and is opposed by obviously significant professional representation. There is an obligation on panels under Rule 10 to “ensure” that the parties are treated with equality and that each party has a fair opportunity to present its case, and this must be particularly so when a party is not represented.

...

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. The Respondent seems to this panelist to have been denied that opportunity, which compromises his due process rights.

---

Had that happened, things may have proceeded differently. However, old Namepros posts aren't going to be of much use, since changing your username on Namepros will change your name on all of your old posts. You can see that in action here:


Show attachment 242865

So, while there is a "lambo.com" post from December 2017, you can see that where it is quoted later in the thread, the original username at that time is reflected in the quote block. Additionally, if you look at old threads on Archive.org, the then-current username is preserved:


Show attachment 242866

But, in any event the Complaint, which was written and filed by an attorney, seems to put that question to bed:


Show attachment 242867


It's hard to tell, absent access to the actual UDRP filings themselves, the centrality of the "commonly known as" defense in the UDRP proceeding. If the Response attempted to imply that the nickname existed before acquisition of the domain name, then that is something the defendant will use to undermine credibility.

One person you don't want to be in this thing is one of the folks who submitted "some testimonials from acquaintances," since their further testimony on how their testimonials came to be will be of interest.

In any event, the dissenting UDRP panelist's position was that the evidence was unclear, and insufficient to compel a result on behalf of the Complainant, who bears the burden of proving its case.

We in the peanut gallery have less access to any reliable evidence than the UDRP panel had. In a UDRP proceeding, there is no way to compel the production of evidence, but there certainly is in a court proceeding. So, however this thing moves forward, the parties and the court are ultimately going to have a lot more evidence on which to make decisions than the UDRP panel, or certainly anyone at Namepros.

To me, seems it would take some strong evidence to override:

1. lack of harm/abuse to Lamborghini from usage of the domain

2. domain has value to Lamborghini and others outside of any trademark rights

Any of the known evidence in this case override 1 and 2 for you? (nickname, domain price, etc.)?

 

[jberryhill]

1. lack of harm/abuse to Lamborghini from usage of the domain

That's not an element of a cybersquatting claim. The ACPA doesn't require a trademark owner to show any actual damages. The relevant law itself says that:

https://www.law.cornell.edu/uscode/text/15/1117

(d) Statutory damages for violation of section 1125(d)(1)

In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

So, there's no evidence needed to "override" that observation, since the absence of actual damages does not matter. In fact, the statute says it does not matter.

2. domain has value to Lamborghini and others outside of any trademark rights

I mentioned that above.

(d) Cyberpiracy prevention

(1)
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

(i)
has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii)registers, traffics in, or uses a domain name that—

(I)
in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II)
in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III)
is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.

---

We're talking about cybersquatting here, not trademark infringement. The relevant question is "what was the intent of this person in registering this domain name?" Now, if the person says "I registered it because some random dude named Lambo might pay me $25M for it" then, sure, the outright distinctiveness of the term at issue is of some relevance. But, credibility on that point is going to factor in a lot more than a list of names and businesses.

The ACPA provides something of a shopping list of non-exclusive factors but, surprisingly, courts tend to focus on the ones actually listed:

(B)
(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
(I)
the trademark or other intellectual property rights of the person, if any, in the domain name;
(II)
the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III)
the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV)
the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V)
the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI)
the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII)
the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII)
the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX)
the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).

Just run down the list. Of nine things to look at, the plaintiff is claiming two - (II and IX) - and one of those is sort of shaky since it arose after registration of the domain name, according to the plaintiff's own admission.

So you are hanging your hat on one of nine things, while there are several items on that list either not helping or affirmatively cutting the other way.

 

[Mize]

That's not an element of a cybersquatting claim. The ACPA doesn't require a trademark owner to show any actual damages. The relevant law itself says that:

https://www.law.cornell.edu/uscode/text/15/1117

(d) Statutory damages for violation of section 1125(d)(1)

In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

So, there's no evidence needed to "override" that observation, since the absence of actual damages does not matter. In fact, the statute says it does not matter.



I mentioned that above.

(d) Cyberpiracy prevention

(1)
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

(i)
has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii)registers, traffics in, or uses a domain name that—

(I)
in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II)
in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III)
is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.

---

We're talking about cybersquatting here, not trademark infringement. The relevant question is "what was the intent of this person in registering this domain name?" Now, if the person says "I registered it because some random dude named Lambo might pay me $25M for it" then, sure, the outright distinctiveness of the term at issue is of some relevance. But, credibility on that point is going to factor in a lot more than a list of names and businesses.

The ACPA provides something of a shopping list of non-exclusive factors but, surprisingly, courts tend to focus on the ones actually listed:

(B)
(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
(I)
the trademark or other intellectual property rights of the person, if any, in the domain name;
(II)
the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III)
the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV)
the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V)
the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI)
the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII)
the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII)
the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX)
the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).

Just run down the list. Of nine things to look at, the plaintiff is claiming two - (II and IX) - and one of those is sort of shaky since it arose after registration of the domain name, according to the plaintiff's own admission.

So you are hanging your hat on one of nine things, while there are several items on that list either not helping or affirmatively cutting the other way.

My thinking: If 1 and 2 are true, Cyberpiracy prevention would be toothless/secondary as value lies outside of the mark holder’s rights. For example, if 1 and 2 are true, Lamborghini proceeding would be attempted theft of that value.

 

[OmarVG]

Lesson: Dont mess with Big Companies Trademark Brands. Dont even try to be a Smart*ss, you will lose the domain, time and your money. No matter what are your Worthless Arguments. There is No opportunity to win a UDRP with a Global BIG Company. And the member "Lambo", must change his Namepros nickname too to avoid another Public Humiliation Lmao

There is no discussion, accept your LOSS and Stop Whining like a Brainless zombie LOL

 

[Mize]

To me, it boils down to harm, violating trust, and not wanting those to happen. I see it as Lamborghini is trying to take what does not belong to them (removing value that is outside of their right/trademark rights). If anyone has something that proves this to be incorrect, please share.

John has been successful in winning against big companies. Here, John and the registrant don’t get along well. I’m hoping John can set that to the side (not dismissing nicknames, pricing, credibility) but to put those relative to the problem that I see. Hopefully discussion benefits us all and reaches further than just domains.

 

[jberryhill]

Lamborghini has now answered the Complaint and filed its counterclaims:

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.30.0.pdf

Some highlights of Lamborghini's defenses and counterclaims:

It's nothing short of amazing that they are only counterclaiming for costs.

It is very unusual that they would not be seeking the typical $100k damages.

This is a very non-aggressive posture, and the parties might do well to see if they can settle this thing on a mutually agreeable basis before the mood changes.

They're not even seeking transfer of the domain name since, if the complaint is dismissed or decided in their favor, the UDRP transfer goes through.

 

[jberryhill]

The Plaintiff has filed his Answer to the Counterclaims. The responsive pleadings in US civil lawsuits are fairly routine, and this one is no exception.

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.34.0.pdf

If you are wondering what's next, there is a status conference scheduled for August 29, and we may see an updated schedule from that. We are approaching the August 22 deadline for the joint case management report, which can sometimes be a hoot when the parties are asked to do something "jointly" but can't manage to do so.

"B. Joint Case Management Report.The parties shall jointly file a Case Management Report with the Clerk not less than seven days before the Case Management Conference."

 

[Mize]

Thank you for the update John.


-------------------------

Can anyone provide examples of how the below is true?.....that Lamborghini has been damaged/suffers irreparable harm?

25. Counterclaim-Defendant’s unlawful use of the domain has caused and continues to cause damage, the infliction of which has caused and will continue to cause Counterclaim-Plaintiff to suffer irreparable harm.

 

[jberryhill]

"Irreparable harm" is a legal term. It does not mean what you think it means.

What it means is that their claimed injury cannot be remedied by payment of monetary damages, but that it requires some form of equitable relief.

https://www.law.cornell.edu/wex/irreparable_harm

https://en.wikipedia.org/wiki/Irreparable_injury

The two general forms of remedies a court can order are legal remedies and equitable remedies. Legal remedies are various forms of monetary damages that might be appropriate to the circumstances - i.e. ordering someone to pay money to someone else. Equitable remedies are things like a declaration of rights or title to property, ordering someone to do something or not to do something, ordering property to be surrendered or transferred, etc.. Lamborghini, remarkably, is not seeking monetary damages in this action, but are seeking either dismissal (which would result in transfer of the domain name due to the UDRP order) or an affirmative order of transferring the domain name.

 

[Mize]

"Irreparable harm" is a legal term. It does not mean what you think it means.

What it means is that their claimed injury cannot be remedied by payment of monetary damages, but that it requires some form of equitable relief.

https://www.law.cornell.edu/wex/irreparable_harm

https://en.wikipedia.org/wiki/Irreparable_injury

The two general forms of remedies a court can order are legal remedies and equitable remedies. Legal remedies are various forms of monetary damages that might be appropriate to the circumstances - i.e. ordering someone to pay money to someone else. Equitable remedies are things like a declaration of rights or title to property, ordering someone to do something or not to do something, ordering property to be surrendered or transferred, etc.. Lamborghini, remarkably, is not seeking monetary damages in this action, but are seeking either dismissal (which would result in transfer of the domain name due to the UDRP order) or an affirmative order of transferring the domain name.

their claimed injury... how is it true? "unlawful use of the domain" That is what I am looking for.

Thank you

 

[Mize]

From the UDRP: "There is no conceivable plausible actual or contemplated use for the disputed domain name."
This seems to show the mindset/position from which Lamborghini is coming from.

To me, that statement is false and I don't see how anyone could prove it true.

 

[Mize]

a new Lambo possibility at uspto.gov:

Word Mark​	LAMBO
Goods and Services​	IC 045. US 100 101. G & S: Registration of domain names (legal services); consultancy relating to the registration of domain names; leasing of internet domain names; registration of domain names for identification of users on a global computer network (legal services); licensing of databases (legal services); licensing of trademarks (legal services); licensing of computer programs (legal services); licensing of computer software and industrial property rights (legal services); licensing of technology (legal services); consultancy relating to the licensing of computer software; trademark monitoring (legal services); licensing services
Mark Drawing Code​	(0) UNKNOWN
Serial Number​	98120390
Filing Date​	August 7, 2023
Current Basis​	1B
Original Filing Basis​	1B
Owner​	(APPLICANT) Freename AG LIMITED LIABILITY COMPANY SWITZERLAND Samstagernstrasse 41 Wollerau SWITZERLAND 8832
Attorney of Record​	Avraham S.Z. Cohn
Description of Mark​	The color(s) Blue is/are claimed as a feature of the mark. The mark consists of the word, "LAMBO", contained within a blue button, a period is before the "LAMBO".
Type of Mark​	SERVICE MARK

 

[jberryhill]

...proving once again that anyone with $300 can file a Section 1B (intent to use) trademark registration application. Freename has filed a bunch of these on "web3" top-level domains they operate. Those applications will fail for the same reasons as Unstoppable's dumb applications.

Meanwhile, back in the real world, the parties have filed their joint case management report and proposed order...

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.36.0.pdf

I had not realized they agreed on a bench trial instead of a jury trial. One can imagine reasons why one or the other might be marginally favorable to either side.

The proposed scheduling order has discovery wrapped up by next March, dispositive motions (e.g. summary judgment) by mid-April, and ready for trial in June.

 

[Mize]

...proving once again that anyone with $300 can file a Section 1B (intent to use) trademark registration application. Freename has filed a bunch of these on "web3" top-level domains they operate. Those applications will fail for the same reasons as Unstoppable's dumb applications.

Meanwhile, back in the real world, the parties have filed their joint case management report and proposed order...

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.36.0.pdf

I had not realized they agreed on a bench trial instead of a jury trial. One can imagine reasons why one or the other might be marginally favorable to either side.

The proposed scheduling order has discovery wrapped up by next March, dispositive motions (e.g. summary judgment) by mid-April, and ready for trial in June.

I didn't read all the background on Unstoppable but seems they ran into a problem because of the dot in ".unstoppable" and not replying back.: "Purchasers would perceive the applied-for mark as a top-level domain (TLD)because it is structured in the manner of a TLD. That is, purchasers are accustomed to the combination of a period followed immediately by a term as a top-level domain." and
"As a result, when used in connection with domain-name registration services, the term
.UNSTOPPABLE would be perceived by consumers as merely referring to a domain that can be
acquired through applicant's services, and not as an indication of source for a domain name registration
services."
It was stated that "the examining attorney has searched the USPTO database of registered and pending marks and has found no conflicting marks"

I saw they are giving it another go with the dot....again.
----------------------------

So for the above Lambo filing for domains/legal services and Unstoppable....they should have consulted you and dropped the "."

----------------------------

Was curious about: From the Lambo.com UDRP: "There is no conceivable plausible actual or contemplated use for the disputed domain name." Are you with Lamborghini on this?

 

[jberryhill]

"There is no conceivable plausible actual or contemplated use for the disputed domain name." Are you with Lamborghini on this?

I guess it depends on who is doing the conceiving and contemplating. Apparently, they couldn't think of one.

 

[Mize]

I guess it depends on who is doing the conceiving and contemplating. Apparently, they couldn't think of one.

ha....that's something. I'm reminded of that Chase cash back commercial: https://www.ispot.tv/ad/7VY4/chase-freedom-cash-back-money-booth

 

[Mize]

@lambo.com can you provide an update?...how are things going with this?

 

[lambo.com]

@lambo.com can you provide an update?...how are things going with this?

Hello fren.

All is well. The is the ext-ent (mind) of the update possible in the circumstances.

Best wishes,
Lambo