Decision for dispute CAC-UDRP-105445

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

Complainant’s Rights

The Complainant is the owner of the following trademark registrations:

• EUTM LORO PIANA (device), registration number 018162715, registered on May 22, 2020, for goods in class 25;
• EUTM LORO PIANA (device), EU Reg. no. 007383136, registered on June 6, 2009, for goods and services in classes 9, 14 and 35;
• International Trademark Registration LORO PIANA (device), registration number 1546962, registered on May 22, 2020, for goods in class 25.

Additionally, the Complainant claims rights and in the LORO PIANA mark established by its extensive use in its fashion business described below.

The Complainant is an Italian company specialized in clothing and textile products. It has rights in the LORO PIANA trademark established by its ownership of the trademark registrations described above and has established a significant goodwill and reputation in the mark by its use in an international chain of stores and on the Internet on its website at www.loropana.com.

The Registrar has confirmed that the registrants of the disputed domain names are as follows:

• <loropianafrance.com>, <loropianafactoryoutlet.com>, <loropianajapan.com>, <oropianacanada.com>, <loropianaitalia.com>, <loropianadanmark.com>, <loropianauae.com>, <loropianamalaysia.com>, <loropianaespana.com>, <loropiananorge.com>, <loropianaaustralia.com>, <loropianask.com>, <loropianaromania.com>, <loropianaschweiz.com>, <loropianasouthafrica.com>, <loropianaisrael.com>, <loropianaportugal.com>, <loropianauk.com>, <loropianabelgie.com> are registered by Web Commerce Communications Limited;
•  <loropianachile.com>, <loropianahrvatska.com>, <loropianamagyarorszag.com>, <loropianapolska.com>, <loropianaslovenia.com>, <loropianasuomi.com>, <loropianagreece.com>, <loropianacolombia.com>, <loropianaturkiye.com>, <loropiananederland.com>, <loropianacz.com> are registered by Kristin Fuhrmann;
• <loropianaosterreich.com>, <loropianaireland.com>, <loropianamexico.com>, <loropianadeutschland.com were registered by Charmi Patel;
• <loropianasingapore.com>, <loropiananz.com>, <loropianaindia.com>, <loropianaphilippines.com>, <loropianaksa.com were registered by Nelson Parreirinha.

The WhoIs information provided shows that all of the disputed domain names were registered on March 27, 2023. Each registration was updated almost immediately on March 27, and March 28, 2023.

Each of the disputed domain names resolves to an active website which purports to offer the Complainant's LORO PIANA branded goods at hugely discounted prices, prominently displays the Complainant’s LORO PIANA mark, has the visual structure, look and feel of the Complainant’s website and creates the overall impression that the website is owned and maintained by the Complainant.

There is no information available about the Respondents except for that provided in the Complaint, the Registrars’ WhoIs records for the disputed domain names and the information provided by the Registrar in response to the request for details of the registrations of the disputed domain names made by the Center for the purposes of this proceeding.

This Panel has found that the Respondents are either a single entity who has adopted a number of names for the purposes of registering the disputed domain names or a group of entities acting in concert as explained below.

COMPLAINANT

Preliminary Issue - Request for consolidation of Complaints

The Complainant requests that the 39 disputed domain names be consolidated in a single proceeding pursuant to Policy paragraph 4(f), which permits a complainant to petition to consolidated disputes before a single Administrative Panel in the event of multiple disputes between a domain name holder and a complainant.

The Complainant submits that the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) at paragraph 3(c) provide that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”.

Furthermore, Rules Paragraph 10(e) grants the Panel authority to “decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Similarly, paragraph 3(c) of the Rules provides that a complaint “may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

The Complainant adds that prior panels established under the Policy have treated multiple registrants controlled by a single person as one single respondent for the purposes of the Policy. See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (noting that the multiple domains at issue “all directed to essentially identical websites”).

It is submitted that where a complaint is filed against multiple respondents, the pertinent factors are whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

The Complainant argues that procedural efficiency should also underpin the Panel’s consideration of this application consolidation in such a scenario.

It is argued that, panels established under the Policy have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identities including pseudonyms, (ii) the registrants’ contact information including e-mail address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names e.g., <mark-country> or <mark-goods>.

In the present case, the disputed domain names are registered in the names of different registrants, whose identities are shielded by privacy services on the published WhoIs. in the course of this proceeding the contact details have been disclosed as follows: Web Commerce Communications Limited, Kristin Fuhrmann, Charmi Patel, Nelson Parreirinha. (This Panel notes that the Registrar has confirmed that the disputed domain names are actually registered in those names, and they are not merely contact persons.).

The Complainant submits that the disputed domain names are subject to common control and consequently the registrants should be considered as a single Respondent, arguing that numerous elements show a common control for the purposes of the Policy, particularly:

• the disputed domain names were all registered on the same day: March 27, 2023;
• the disputed domain names were all registered with the same Registrar;
• the disputed domain names are all using the same hosting services;
• the composition of the disputed domain names reflect a clear naming pattern as 38 out of 39 disputed domain names are composed of the LOROPIANA trademark combined with the name of a state in each case: (France; Chile; Hratska; Japan; Canada; Italia; Magyarorszag; Polska; Danmark; Osterreich; Singapore; Slovenia; Malaysia; Espana; India; Suomi; Greece; Norge; Colombia; Philippines; Australia; Turkiye; Romania; Ireland; Schweiz; South Africa; Nederland; Mexico; Israel; Portugal; Deutschland; Belgie) or abbreviations of states names (CZ for Czechia; SK for Slovakia; KSA for Kingdom of Saudi Arabia; UAE for United Arab Emirates; NZ for New Zealand);
• as shown in screen captures annexed to the Complaint, all the disputed domain names redirect to websites (the “Respondents’ Websites”), which have the same look and feel as the Complainant’s official LORO PIANA website;
• the Respondents’ Websites reproduce the LORO PIANA trademark with its peculiar graphic stylization as well as images from the Complainant’s official communication campaigns, and purport to offer for sale counterfeit LORO PIANA branded products.

In support of these submissions the Complainant refers to a copy of the WhoIs information for the disputed domain names, screen captures of the websites to which the disputed domain names resolve, and a table that summarizes the common elements between the disputed domain names, which are helpfully exhibited in an annex to the Complaint.

The Complainant argues that it is not necessary for this Panel to find that the disputed domain names are registered nominally to a single entity or person. The issue is whether the Respondents can be treated as a single domain name holder because they are involved in a common enterprise, and whether it is procedurally fair and efficient to consolidate the disputes into this single Complaint.

The Complainant adds that the definition of the “Respondent” under paragraph 1 of the Rules does not exclude the “holder” of the domain name registrations from being a common enterprise, being carried out by multiple individuals (See Yahoo! Inc. v. Mahesh Rohatgi / Prakhar Rastogi, Bestwebexperts.com / Prakhar Rastogi, Best Web Experts / Privacy Protection Service INC d/b/a PrivacyProtect.org / Prashant Mishra, Vipra Busines Solution / Rina Rohatgi / Wemo Tech Support / Charu Rohatgi / Alina Jain / Raju Hirani, Alfa Infosystem / Brijesh Pandey, IBS Infosystem / Registration Private, Domains By Proxy, LLC / Amit Singh / Satya Prakash / Rajveer Singh Chawla / Pooja Pandey, Innovative Business Solutions, WIPO Case No. D2015-2323).

Substantive Issues

Addressing the substantive issues, the Complainant states that it is an Italian company specialized in clothing and textile products which is considered one of the largest cashmere manufacturers and the leading artisan company processing luxury fibres in the world.

The Complainant claims rights in the LORO PIANA mark established by its ownership of the portfolio of registered trademarks described below and its rights acquired by use of the mark in relation to its produces with €1 billion in sales in 2019, having a total of 152 stores, 235 located across the world, 135 of which are directly operated.

The Complainant adds that it has an established Internet presence with its official website at <www.loropiana.com>; it is active on several social networks, including Facebook with almost 100.000 followers and Instagram with approximately a million followers; and due to such longstanding use, and huge promotional and advertising investments, the LORO PIANA trademark is certainly well-known.

The Complainant submits that all the disputed domain names are confusingly similar to the Complainant’s LORO PIANA trademark as they each contain the well-known trademark combined with geographic or generic words.

The Complainant argues that the geographical and generic terms, rather that excluding a similarity with the earlier well-known LORO PIANA trademark, increase the likelihood of confusion.

The geographic place-name elements in 38 of the 39 disputed domain names each refer to a specific country, and are aimed at consumers located in a specific geographical area.

The generic terms in the remaining <loropianafactoryoutlet.com>, reference a store selling clothing originating from a particular manufacturer or wholesaler, for example <loropianafactoryoutlet.com> that combines the LORO PIANA mark with “factory” and “outlet”.

It is further argued that the addition of the generic Top Level domain name (“gTLD”) extensions <.com> have no impact in the confusing similarity assessment since they have a technical function.

The Complainant next alleges that the Respondents have no rights or legitimate interests in the disputed domain names and asserts that the Respondents are not authorized dealers, agents, distributors, or resellers of the Complainant’s goods nor that they are authorized to register and use the Complainant’s LORO PIANA trademark in a domain name.

Furthermore, referring to screen captures of the Respondents’ Websites which are annexed to the Complaint, the Complainant submits that all of the disputed domain names lead to active websites reproduce images from the Complainant’s official marketing campaigns.

The Complainant adds that the layout adopted for the Respondent’s Websites is very similar to the layout of the Complainant’s official website; and furthermore, the Complainant’s figurative trademark is displayed on all of the Respondent’s Websites.

Therefore, the Complainant argues the disputed domain names were registered and are being used with the specific aim of misleading potential consumers in order to push consumers to purchase counterfeit goods purporting to be those of the Complainant.

The Complainant next alleges that the disputed domain names were registered and are being used in bad faith.

The Complainant repeats that the Respondents registered the disputed domain names, each containing its very well-known LORO PIANA trademark without any authorization by the holder.

The Complainant submits that the registrant of the disputed domain names could not ignore the existence of the LORO PIANA trademark at the time of the registration, because LORO PIANA is a very well-known trademark, the composition of the disputed domain names which consist of the Complainant’s trademark in combination with terms that potential consumers may very well associate with the Complainant’s activity.

Additionally, the facts show that the Complainant has been the target of common conduct based on the registration and use of the disputed domain names.

With regard to the allegation that the disputed domain names were registered in bad faith, the Complainant repeats that the disputed domain names redirect to Respondents’ Websites on which the Respondents purport to offer counterfeit LORO PIANA branded goods, and uses images which are the subject of copyright, taken from the Complainant’s official website.

The Complainant adds that such use is certainly not a use in good faith, as it may cause, and has effectively caused, substantial damage not only to the Complainant, but also to consumers.

On the one side, the Complainant’s image and reputation are strongly affected by the Respondents’ Websites, very similar to the official one, offering for sale low quality counterfeit goods.

On the other side, consumers share confidential information when they pay the purchased goods, with the concrete risk that this information is stolen and used fraudulently by the Respondent.

The Complainant submits that therefore the disputed domain names have been registered and are being used to intentionally attract for commercial gain, Internet users to the Respondents’ Websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ Websites, and the products that the Respondents purport to offer for sale.

RESPONDENT

No administratively compliant Response has been filed by the Respondents.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Preliminary Issue: Decision on the Application for Consolidation

This Panel has decided to allow the Complainant’s application for consolidation of the complaints in respect of the 39 disputed domain names.

In doing so this Panel adopts the reasoning of the learned panelist in the case cited by the Complainant, Yahoo! Inc. v. Mahesh Rohatgi / Prakhar Rastogi, Bestwebexperts.com / Prakhar Rastogi, Best Web Experts / Privacy Protection Service INC d/b/a PrivacyProtect.org / Prashant Mishra, Vipra Busines Solution / Rina Rohatgi / Wemo Tech Support / Charu Rohatgi / Alina Jain / Raju Hirani, Alfa Infosystem / Brijesh Pandey, IBS Infosystem / Registration Private, Domains By Proxy, LLC / Amit Singh / Satya Prakash / Rajveer Singh Chawla / Pooja Pandey, Innovative Business Solutions, WIPO Case No. D2015-2323, who, in a similar case decided:

“In these circumstances, the Panel accepts the Complainant’s evidence that the disputed domain names are subject to common control, in that there is a “unity of interests” between the various Respondents, whoever they may be in fact. The Complainant has, no doubt painstakingly, dissected the evidence and records relating to the disputed domain names to identify connections between them, as outlined above. The Respondents have provided no evidence in response to that put forward by the Complainant.

The Panel also finds that the consolidation of these disputes would be fair and equitable. On the Complainant’s evidence, and as described further below, all of the disputed domain names appear to have been registered with a similar purpose in mind. There is a commonality of facts and issues for each disputed domain name. As such, it is more procedurally efficient to proceed with a single decision.

For these reasons, the Panel agrees to the consolidation of the Complaint in relation to each of the disputed domain names.

In reaching this conclusion, the Panel notes that it is not necessary for it to find that the disputed domain names are registered to a single entity or person in-fact. The evidence in this case is not clear either way on this point. And whether or not there are multiple Respondents in-fact will be peculiarly within the knowledge of one or more of the Respondents, which have not provided any such information. As noted above, the issue is whether the Respondents can be treated as a single domain name holder, because they are involved in a common enterprise, and whether it is procedurally fair and efficient to do so. The definition of the “Respondent” under paragraph 1 of the Rules2 does not exclude the “holder” of the domain name registrations from being a common enterprise, being carried out by multiple individuals.”

In the present case, the factors identified in the Complaint demonstrate that the disputed domain names are registered by a single entity or a group acting in concert, and show a common control for the purposes of the Policy, viz:

• the disputed domain names were all registered on the same day: March 27, 2023;
• the disputed domain names were all registered with the same Registrar;
• the disputed domain names are all using the same hosting services;
• the composition of the disputed domain names reflect a clear naming pattern as 38 out of 39 disputed domain names are composed of the LOROPIANA trademark combined with either the name of a state: (France; Chile; Hratska; Japan; Canada; Italia; Magyarorszag; Polska; Danmark; Osterreich; Singapore; Slovenia; Malaysia; Espana; India; Suomi; Greece; Norge; Colombia; Philippines; Australia; Turkiye; Romania; Ireland; Schweiz; South Africa; Nederland; Mexico; Israel; Portugal; Deutschland; Belgie) or an acronym or recognizable code for states names (CZ for Czechia; SK for Slovakia; KSA for Kingdom of Saudi Arabia; UAE for United Arab Emirates; NZ for New Zealand);
• as shown in screen captures annexed to the Complaint, all the disputed domain names redirect to the Respondents’ Websites, which have the same look and feel as the Complainant’s official LORO PIANA website;
• the Respondents’ Websites reproduce the LORO PIANA trademark with its peculiar graphic stylization as well as images from the Complainant’s official communication campaigns, and purport to offer for sale counterfeit LORO PIANA branded products;
• the Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the LORO PIANA mark, established by its trademark registrations described above and extensive use of the mark in its clothing business; and
• LORO PIANA is a distinctive and well known mark and it is improbable that it would be chosen and incorporated into a domain name without knowledge of the Complainant, its business and its goodwill.
  
  

All in all the coincidence is too much for there not to be a concerted action in registering and using the disputed domain names.

The Complainant’s Rights

The Complainant has provided convincing, uncontested evidence that it has rights in the LORO PIANA mark, established by the ownership of the portfolio of trademark registrations described above, and extensive use of the mark in its clothing and fabrics business including on the Internet.

Confusing Similarity

The disputed domain names in each case, consists of the Complainant’s LORO PIANA mark in its entirety in combination with a geographical place name, or generic element and the generic Top-Level Domain extension (“gTLD”).

In each case, the Complainant’s LORO PIANA mark is the initial, dominant, and only distinctive element in the disputed domain name.

The geographical place names and the acronyms and codes representing them, add no distinguishing character to the disputed domain names their addition to the LORO PIANA mark within the disputed domain names does not in any case prevent a finding that the disputed domain name is confusingly similar to the mark in which the Complainant has rights.

Neither do the generic terms in <loropianafactoryoutlet.com> add any distinguishing character to the disputed domain name and do not prevent a finding that the disputed domain name is confusingly similar to the LORA PIANA mark.

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,

This Panel finds therefore that the disputed domain names are confusingly similar to the LORO PIANA mark, and the Complainant has therefore succeeded in the first element of the test in Policy 4(a)(i).

Rights and Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name arguing that:

• the Respondents are not authorized dealers, agents, distributors, or resellers of the Complainant’s goods;
• the Respondents are not authorized to register and use the Complainant’s LORO PIANA trademark in a domain name;
• the screen captures of the Respondents’ Websites which are annexed to the Complaint, show that all of the disputed domain names lead to active websites and reproduce images from the Complainant’s official marketing campaigns;
• the layout of the Respondent’s Websites mimic the Complainant’s official website;
• the Complainant’s figurative trademark is displayed on all of the Respondent’s Websites.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

The Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has therefore succeeded in the second element of the test in Policy 4(a)(ii).

Registration and Use in Bad Faith

The evidence shows that the disputed domain names were all registered on the same day, March 27, 2023, and updated almost immediately on March 27 and 28, 2023. All of the disputed domain names have an identical structure, with the Complainant’s mark as its initial and dominant element and 38 out of 39 disputed domain names are composed of the LOROPIANA trademark combined with the name of a state. The other domain name <loropianafactoryoutlet.com> combines the Complainant’s trademark with generic terms descriptive of retail services.

On the balance of probabilities therefore each of the disputed domain names was chosen and registered in bad faith with the Complainant and its LORO PIANA mark in mind, intending to take predatory advantage of the Complainant’s reputation and goodwill by confusing Internet users.

Additionally, this Panel has found that the disputed domain names were registered by a single entity purporting to be a number of entities, or by a number of entities acting in concert with the intention of using the disputed domain names to attract and confuse Internet users and to divert Internet traffic intended for the Complainant's website.

Regarding use of the disputed domain names in bad faith, each of the disputed domain names resolves to the Respondents’ Websites on which the Respondents purport to offer LORO PIANA branded goods at greatly reduced prices.

It is not clear whether the disputed domain names resolve to a single website or numerous almost identical websites. What has been shown, and has not been challenged, is that each of the disputed domain names resolves to a website which purports to offer the Complainant’s branded goods for sale at greatly reduced prices, which prominently displays the LORO PIANA registered trade mark, including the device.

The Respondent’s Websites, by adopting the look and feel of the Complainant’s own website and using images which are allegedly taken from the Complainant’s marketing campaigns, are designed to create the impression that they are owned, maintained and controlled by the Complainant.

There are other factors which indicate that the disputed domain names are being used in bad faith. However, these factors alone are sufficient to convince this Panel that the Respondents are using the disputed domain names in bad faith in an attempt to attract, for commercial gain, Internet users to the web sites to which they disputed domain names resolve, by creating a likelihood of confusion with the Complainant's LORO PIANA mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ Websites and the goods that the Respondents’ purport to offer for sale to the public.

As this Panel has found that the disputed domain names were registered and are being used in bad faith, the Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii) and are entitled to the order sought.