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...

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[King]

Didn't think they would actually win.

 

[Business Brands]

good

 

[Andreas B.]

What if I'd hold Rari.com, Benzo.com or Merc.com

What about beamer.com

wtf???

 

[jberryhill]

What if I'd hold Rari.com, Benzo.com or Merc.com

Apparently, no significant group of consumers calls them that.

What about beamer.com

It is part of the Tucows Realnames portfolio, and can be used as a domain name for email if, for example, your surname is Beamer.

It would be a bad idea to use it for automobile related stuff, since that is a common reference in the automobile market to BMW, and has been adopted as a mark by them:

Just like Rolls and Jag.

 

[Sam1234]

If Lambo could be swiped, why not Beamer?

 

[jberryhill]

If Lambo could be swiped, why not Beamer?

Because how the domain name is being used matters, along with what sort of evidence demonstrates that.

Bosch is a major auto parts manufacturer. "Bosch" is also a last name. But there is a difference between saying "but it can be a lot of people's last name" and actually using the domain name for a purpose related to that fact:

Robert Bosch GmbH v. Domain Admin, Tucows.com Co
WIPO Case No. D2017-2549
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-2549

The Panel finds that (i) applies in this case. The Respondent has provided credible and detailed evidence that the Disputed Domain Name forms part of its portfolio of domain names which are used in a business providing email addresses to persons where the second-level domain name element of the relevant email address corresponds to a person's surname.

The Panel has no doubt that this represents a legitimate and bona fide business. A number of previous UDRP panels have reached the same conclusion in relation to the Respondent's business in this regard (or its predecessors in that business) – see for example Grasso's Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. Tucows.com Co, WIPO Case No. D2009-0115; International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210; and Buhl Optical Co v. Mailbank.com, Inc., WIPO Case No. D2000-1277.

There are hundreds of last-name domain names that Tucows uses for the Realnames service. So, if you are going to argue "I registered the domain name because it is a surname", then it is fairly convincing to show that you have hundreds of other surnames registered and used for the same purpose. The use of surname domain names for an email service is a legitimate bona fide use which has been recognized in a lot of UDRP cases.

 

[MasterOfMyDomains]

good

Sorry you closed your account borker.
Go cuddle with your friend adam dicker
Whats with lambo.com ? On topic, I typed it in to see whatsup and got errrors
file:///System/Library/PrivateFrameworks/SafariShared.framework/CertificateWarning.html

 

[jhm]

I just find these things to be very unfortunate. Lambo is his genuine alias, acting in his own individual capacity, separate from the manufacturer. Maybe if he promoted cars / products, I'd think differently about it, but that isn't the case. In a hypothetical world (it has to be hypothetical, because they of course have their COM), if a guy with the alias "Dodge" happened to own the COM for his blog, running it in a small and personal way, the more known Dodge could slap a UDRP. I'm not qualified nor know the legal ins and outs, but for me it's a harsh judgment, and an exhibit of power

 

[MasterOfMyDomains]

I totally disagree with the decision.
But this business, is not clean. Front running, assets removed from registrants accts.
Some guy on dan with username name pro has couple my names listed.
Nothing surprise me. I hope lambo wins his law suit

 

[jhm]

Rolls (COM), as of today an electronics manufacturer. The use isn't touching the sides of the business on the other side (nor did Lambo)

 

[jberryhill]

It might be worth phrasing that one a little differently.

 

[Sam1234]

I love your brand Lambo!

 

[karmaco]

Wishing user Lambo all the best and a victory

 

[jberryhill]

Lamborghini enters the chat...

 

[jberryhill]

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.12.0.pdf

IT IS STIPULATED AND AGREED, by and between the undersigned counsel, that Defendant shall file an Answer or otherwise respond to Plaintiff’s Complaint on or before March 1, 2023

 

[jberryhill]

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

A further extension of time has been entered for Lamborghini to respond, along with an amended Complaint:

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.21.0.pdf

Perhaps someone can run down all the difference(s) with the original Complaint posted to the docket above. In all likelihood, the changes are simply for the purpose of nailing down elements of the ACPA on which to premise the request for declaratory judgment, in order to make the Complaint less susceptible to a motion to dismiss.

Just eyeballing the paragraph numbers, the original complaint had 54 paragraphs, and this one has 58, so the differences are not likely to be earth shattering, and the amendment is likely for technical reasons to make sure that certain statutory elements are clearly established.

One thing the filing does indicate is that settlement discussions have thus far been unsuccessful, since by now the attorneys for the parties have had several opportunities to confer, and the Plaintiff has decided to write another of what promises to be a long series of checks.

 

[twiki]

Fingers crossed, I hope the domain is won back.

 

[jberryhill]

Lamborghini motion to dismiss filed:

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.23.0.pdf

 

[jberryhill]

My quick read of the motion is that it's not very good.

I don't believe there is any rationale that would support this kind of motion to dismiss under 12(b)(6). That kind of motion - seeking dismissal for failure to state a claim - requires the court to assume that everything in the Complaint is true, and then taking it all as true, determine whether that would make out the legal claim the Plaintiff is making.

This motion misses the mark and, frankly, it is difficult to figure out their point. Essentially, they are saying that under a well-known precedent applicable in that circuit, a domain registrant is able to rely on the priority of the domain creation date. But Blair, they argue, is not the original registrant.

Well, so what? Blair's claim that his registration of the domain name is lawful does not hinge on when he is deemed to have registered the name or when the name is deemed to have been registered, re-registered, or anything else. Blair's claim is that he had a legitimate right to register a domain name which he alleges is identical to his nickname.

Now, sure, there may be factual or credibility problems with that later down the road, but for the purpose of a motion to dismiss, we accept the allegations of the Complaint as true.

For that reason, the motion to dismiss misses the mark by a lot. Brett Lewis is going to have a good time with this one.

Moving on, the motion further attempts to make a distinction between an express statutory provision relating to bad UDRP decisions, and a broader claim seeking declaratory judgment of non-infringement and non-cybersquatting. The motion argues that the specific statutory RDNH claim and the broader DJ claim are essentially the "same thing" and that they both must fall for the same reason. The problem as I see it is that those two counts of the Complaint are not the same legal claim. Sure, they are based on the same facts, but they are not asking for the same thing.

Of course, saying that both counts fail for the same reason, would require one to advance a good reason why at least one of them is not made out by the allegations of the Complaint. And that, Lamborghini didn't do.

So, without even seeing the excellent job that Brett Lewis and Michael Cilento will do with this meatball pitch, I'm calling this round for Blair. At the very worst, he might be given an opportunity to amend the Complaint, but the Lamborghini motion has a lot of empty rhetoric which feels like it is going somewhere, but fails to reach its destination.

 

[DomainNature]

Let's not forget that the Complainant did not take action to take the domain, until they were contacted by me to offer rebranding opportunity which they rejected, this means that they did not care about a shorter brand until my contact.

Also i consider that if i buy a domain today, which did not had a Trademark at the time of registration, I m rightful owner, the Trademark could be created after they have seen the Domain name, I expect that to happen after my big release of a info, that is why I will destroy those who will create products/services based on my domain names, lazy grabbers.

 

[jberryhill]

As noted above, Lamborghini's motion to dismiss is pretty far-fetched.

Accordingly, the plaintiff has filed a motion for sanctions.....

The Memorandum is here:

https://storage.courtlistener.com/recap/gov.uscourts.azd.1307873/gov.uscourts.azd.1307873.26.3.pdf

In a nutshell, the Plaintiff is seeking an award of attorney's fees and costs incurred in dealing with the frivolous motion to dismiss.

 

[Samer]

I believe!

 

[jberryhill]

Lamborghini has filed its response to the motion for sanctions, making what is quite possibly the dumbest argument ever made in an ACPA case:

https://ecf.azd.uscourts.gov/doc1/025026461474?caseid=1307873

Boiling it down, Lamborghini's position is that a "domain name registrant" is the first person who registers a domain name, and not any subsequent assignee.

 

[Embrand]

Lamborghini has filed its response to the motion for sanctions, making what is quite possibly the dumbest argument ever made in an ACPA case:

https://ecf.azd.uscourts.gov/doc1/025026461474?caseid=1307873

Show attachment 240511

Boiling it down, Lamborghini's position is that a "domain name registrant" is the first person who registers a domain name, and not any subsequent assignee.

Unbelievable. Do Lamborghini's lawyers get paid for this