Decision for dispute CAC-UDRP-105776

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

The Complainant is inter alia owner of EU trademark registration no. 018162715 "Loro Piana <fig.>", registered on May 22, 2020, in class 25 (hereinafter referred to as the "Trademark").

The Complainant is an Italian company specializing in clothing and textile products. It is considered one of the largest cashmere manufacturers and the world's leading artisan company processing luxury fibres. The Complainant today has a total of 152 stores, of which 135 are directly operated. The company reached the 1-billion-euro sales mark in 2019, and revenues in 2021 are forecast to surpass the 2019 figures. The Complainant provides information on its company and offers its products online at www.loropiana.com. 

The disputed domain names were registered on August 4, 2023, August 7, 2023, August 8, 2023, and August 10, 2023, respectively. These domains have partly been utilized to host active websites that prominently feature the protected Loro Piana device logo and showcase copyrighted pictures taken from the Complainant’s official website.

COMPLAINANT:

The Complainant contends that the disputed domain names are confusingly similar to the Trademark. They argue that they all contain the well-known Trademark combined with geographic or generic words, which do not exclude a similarity with the Trademark but rather increase the likelihood of confusion.

Additionally, the Complainant argues that the Respondent lacks rights or legitimate interests in the disputed domain names. Specifically, they state that the Respondent is no authorized dealer, agent, distributor, or reseller of the Complainant's products nor that they are authorized to register and use the Trademark in a domain name. The Complainant further contends that a total number of 32 of the disputed domain names lead to active websites that reproduce part of the images of the Complainant’s official marketing campaigns and that the layout of the Respondent's fake websites is very similar to the layout of the Complainant’s official website. The Complainant also points to the fact that the websites prominently feature the Complainant’s Loro Piana device logo and therefore aim to mislead potential consumers in order to push consumers to purchase counterfeit goods. With regard to the inactive domain names, the Complainant argues that these domain names are neither used for a bona fide offering of goods and services nor in relation to a legitimate noncommercial activity.

Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. They state that the Respondent registered domain names containing a very well-known trademark without any authorization from the trademark holder and is partly using the domain names in connection with fake websites. As a result, the Respondent registered the disputed domain names in bad faith. With regard to bad faith use, the Complainant argues that some of the disputed domain names redirect to websites that offer counterfeit goods, and unduly depict copyrighted pictures taken from the Complainant’s official website and that these disputed domain names are being used to intentionally attract for commercial gain, Internet users to the Respondent’s web sites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site and of a product or service on the Respondent’s web site or location. As regards the inactive domain names, they argue that such domain names are used in bad faith through passive holding because the reputation of the Trademark combined with the fact that the Trademark is associated with geographical terms makes it very improbable that the use of the disputed domain names would not infringe the Trademark.

RESPONDENT:

No administratively compliant Response has been filed.

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.

1. Preliminary Issue: Consolidation of Respondents