Decision for dispute CAC-UDRP-107881

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

The evidence has established that the Complainant is the owner of a portfolio of registered trademarks including:

• the International trademark registration for LORO PIANA, No. 578976, registered on November 13, 1991;

• the European Union trademark registration for LORO PIANA, No. 007383136, registered on June 9, 2009; and
  
  
• the International trademark registration for LORO PIANA, No. 1546962, registered on May 22, 2020;

(collectively "the LORO PIANA trademark").

The Complainant, Loro Piana S.p.A., is a renowned Italian company engaged internationally in the provision of a diversified range of activities under the brand LORO PIANA, specialising in textile manufacturing and ready-to-wear clothing.

As well as the LORO PIANA trademark, the Complainant owns the domain name <loropiana.com> which it registered on September 14, 2001 and which it uses in its business to promote its products under its LORO PIANA trademark and brand.

It has come to the notice of the Complainant that on June 7, 2025, without any permission and many years after the Complainant acquired its aforesaid trademark rights, the Respondent registered the domain name <loropianausa.shop> ("the Disputed Domain Name") which includes the LORO PIANA trademark in its entirety, with the addition of the letters “usa” which signify the United States of America and also the Top Level Domain “.shop.” The Respondent has then caused the Disputed Domain Name to resolve to a website that uses the LORO PIANA trademark, offers for sale products that purport to be genuine LORO PIANA products at substantial discounts and invites users to “Sign up” and provide their e-mail addresses.

The Disputed Domain Name and the website to which it resolves pose a very concerning threat to the Complainant’s business and the LORO PIANA trademark and brand. That is because the Complainant submits that the Disputed Domain Name and the use made of it by the Respondent constitute an infringement of the LORO PIANA trademark, give rise to a likelihood of confusion in the minds of internet users between the trademark and the Disputed Domain Name and pose the threat of potentially improper use that might be made of the Disputed Domain Name in the future if the Respondent retains it.        

The Complainant maintains that the Disputed Domain Name is confusingly similar to its trademark, that registering the Disputed Domain Name and having it resolve to the aforesaid website cannot give rise to a right or legitimate interest in the Disputed Domain Name and that the Disputed Domain Name has been registered and used in bad faith.

The Complainant has therefore brought this proceeding under the Uniform Domain Name Dispute Resolution Policy to obtain a transfer of the Disputed Domain Name to itself and thus the cessation of the improper use which it submits the Respondent has made of it.

COMPLAINANT:

The Complainant made the following contentions.

(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant owns the trademarks for LORO PIANA set out above and which were registered many years before the Respondent registered the Disputed Domain Name on June 7, 2025.

The Disputed Domain Name <loropianausa.shop> incorporates the Complainant’s LORO PIANA trademark in its entirety with the addition of the letters “usa” which signify the United States of America and the Top Level Domain “.shop.” The trademark is clearly recognizable in the Disputed Domain Name. The addition of the letters “usa”, signifying the United States of America, enhances the confusing similarity between the Disputed Domain Name and the trademark because internet users would read the Disputed Domain Name as invoking the Complainant, its trademark and brand, and genuine products offered under the trademark that could be acquired through the Complainant’s shop in the United States of America.

Thus, the Disputed Domain Name is confusingly similar to the LORO PIANA trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As is universally accepted, the Complainant is first required to make out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and, if such a prima facie case is made out, the onus of proof is then transferred to the Respondent to rebut any such prima facie case that has been established.

The Complainant submits that, for the following reasons, it can make out its prima facie case.

First, the Complainant has not given any permission or authority to the Respondent to register or use the Disputed Domain Name and there is no affiliation, business or other relationship between the Complainant and the Respondent.

Secondly, the Respondent has registered the Disputed Domain Name and caused it to resolve to a commercial website that prominently displays the Complainant’s LORO PIANA trademark, and offers alleged LORO PIANA products at substantial discounts, being products that are probably counterfeit.

Thirdly, the Respondent has also used the Disputed Domain Name to solicit personal information from internet users who visit its aforesaid website.

Fourthly, the use to which the Respondent has put the Disputed Domain Name is not a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy and is not a legitimate, noncommercial or fair use of the Disputed Domain Name within the meaning of Paragraph 4(c)(iii) of the Policy.

Fifthly, the aforesaid use of the Disputed Domain Name shows that it has been used by the Respondent for a typical scammer website.

Accordingly, the Complainant submits that it has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant submits on the following grounds that the Disputed Domain Name was registered and is being used in bad faith.

First, the Respondent has taken the Complainant’s well-known LORO PIANA trademark and without permission or authority has entirely incorporated it in the Disputed Domain Name which is virtually identical and certainly confusingly similar to the trademark.

Secondly, the Respondent has caused the Disputed Domain Name to resolve to a website that offers for sale at substantial discounts products that are purported to be genuine LORO PIANA products, but which in reality are probably counterfeit and the website also offers numerous products of the Complainant’s competitors under their own brand names.

Thirdly, the Respondent’s website actively solicits visitors to its website to “Sign up” and provide their e-mail addresses, in all probability as part of a phishing scheme.

Fourthly, the Respondent has clearly sought to generate internet traffic to its website by misleading third parties into a false belief that it is operated or authorized by the Complainant, and for an illegitimate and probably fraudulent purposes.

Fifthly, the Disputed Domain Name, and the use to which it has been put, are calculated to generate confusion within the meaning of Paragraph 4(b)(iv) of the Policy.

Accordingly, the Complainant submits that the Respondent has registered and used the Disputed Domain Name in bad faith.

The Complainant thus submits that it has established all of the elements it is required to prove under the Policy and that it is therefore entitled to the relief that it seeks.

RESPONDENT

The Respondent is in default and has not filed a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is 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 Name (within the meaning of Paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name has been registered and is 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 the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.

A. Administrative deficiency

By notification dated September 15, 2025 and in accordance with Paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that it had not sufficiently identified the Respondent. The Complainant was invited to see the Registrar’s verification available in the online case file in the form of a non-standard communication regarding the appropriate identification of the domain name holder.

Also on September 15, 2025, the Complainant filed an Amended Complaint correcting the deficiency and the CAC thus determined that the Complaint should be admitted to proceed further in the Administrative Proceeding.

The Panel has reviewed all of the above matters and makes a finding that within the meaning of Paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.


B. Substantive matters

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the onus is on the Complainant to make out its case, and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar.

The first issue that arises is whether the Complainant has a trademark on which it may rely in this proceeding. In that regard, the Panel finds that the Complainant has adduced evidence that the Panel accepts, that it is the registered owner of the LORO PIANA trademark, particulars of which have been set out above. That evidence is in documentary form that the Panel has examined and finds to be in order. The Panel therefore finds that the Complainant has established its trademark rights and hence its standing to bring this proceeding.

The Panel next finds that the Disputed Domain Name is confusingly similar to the LORO PAINA trademark. That is so for the following reasons

First, the evidence has established that on June 7, 2025 the Respondent registered the Disputed Domain Name which includes the entirety of the LORO PIANA trademark. The Disputed Domain Name also includes, immediately after the trademark, the letters “usa” which signify the United States of America and that designation is followed by the Top Level Domain “.shop.”

The entirety of the trademark is therefore included in the Disputed Domain Name and the trademark is by far its most dominant feature. Accordingly, the attention of the internet user would naturally be drawn to the use of the trademark in the Disputed Domain Name which would inculcate in the mind of the user that it is an official domain name of the Complainant or that it was authorized by the Complainant, neither of which on the evidence of the Complainant was true.

Secondly, the presence of the letters “usa”, signifying the United States of America does not negate that conclusion but enhances it, as the Complainant contends, because it gives to the Disputed Domain Name the meaning that it is invoking the Complainant and the goods and services that it offers in that country via the Complainant’s shop or alternatively via a retail outlet authorized by the Complainant.

Thirdly, it is also well-established that in assessing confusing similarity between a trademark and a domain name, the relevant Top Level Domain such as ".shop" generally does not negate that conclusion, because all domain names require such an extension and the Top Level Domain does not show one way or the other whether a domain name is confusingly similar to a trademark. The only exception to that general principle can be where the Top Level Domain itself adds to the meaning of the domain name in question. That is so in the present case, as choosing to register a domain name in the “.shop” Domain, can only mean that the Disputed Domain Name means, and was intended to mean, that it relates to the goods and services of the relevant trademark owner that are available by acquiring them through a shop or other retail outlet, whether a bricks-and-mortar shop or by means of an online purchase.

Accordingly, the Disputed Domain Name is confusingly similar to the Complainant’s trademark; it is similar to the trademark because its dominant element is the Complainant's trademark and it is confusingly similar because internet users would naturally wonder whether it was an official and genuine domain name of the Complainant or not.

The Complainant has therefore established the first element that it must show under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under Paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

But by virtue of Paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Disputed Domain Name, the complainant will have failed to discharge its onus and the complaint will fail. It is also well-established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the respondent cannot do so, a complainant is deemed to have satisfied Paragraph 4(a)(ii) of the Policy.

The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The case is made the stronger by the Complainant having adduced relevant documentary evidence which the Panel accepts and which will shortly be referred to, and by the Complainant's citation and discussion of previously decided UDRP cases which support its contentions.

The Panel will address each of the grounds relied on by the Complainant in the order in which they have been submitted by the Complainant. Those grounds are that:

(a) the evidence is that the Complainant did not give any permission or authority to the Respondent to register or use the Disputed Domain Name and in particular did not give any permission or authority to the Respondent to use its trademark in a domain name or in any other way; moreover, the evidence is that there is no affiliation, business or other relationship between the Complainant and the Respondent; thus it could not be contended that the Disputed Domain Name was registered with any type of consent by the Complainant;

(b) the evidence is that the Respondent has registered the Disputed Domain Name and caused it to resolve to a commercial website that prominently displays the Complainant’s LORO PIANA trademark, offers alleged LORO PIANA products at substantial discounts and which are probably counterfeit; the evidence in support of this submission includes Annex 2 to the Complaint which is a screenshot of the website to which the Disputed Domain Name resolves; the Panel has examined this screenshot and finds that it supports the Complainant’s contentions; it shows extensive use of the LORO PIANA trademark which of course the Respondent had no permission to use at all and which is an infringement of the trademark; it also illustrates products allegedly sold by the Complainant itself under headings such as “Deal of the Day” and “LORO PIANA LOAFERS” with illustrations that the evidence shows are copyright images owned by the Complainant; more disturbingly, it offers shoes and bags under brands alleged by the Respondent to be Cole Haan, QOOEL, J W Pei, Journey West, Rheber, Florsheim, Sumrains and numerous other brands, with their brand names openly displayed; all of the products offered have allegedly marked-down prices, suggesting on the balance of probabilities that they are counterfeit or illegally obtained and are now being illegally sold; there is no way that such a series of deceptions could give rise to a right or legitimate interest in the very domain name used to perpetrate such a series of subterfuges; in particular, the Respondent is using the Complainant's trademark to sell products of the Complainant's competitors;

(c) the evidence is also that the Respondent has used the offending website to solicit personal information from internet users who visit the aforesaid website; the Panel agrees with this contention as it observes that one of the blandishments of the website is to invite users to "Sign up”, with an express invitation to provide the user’s e-mail address; this suggests strongly that one of the objectives of the Respondent was to engage in a phishing expedition for personal information and for its own benefit; the website was, as the Complainant contends, “a typical scammer website”.

(d) it is clear from the foregoing evidence that the use to which Respondent has put the Disputed Domain Name is not a bona fide use within the meaning of Paragraph 4(c)(i) of the Policy; there is nothing bona fide in engaging in such a series of subterfuges; moreover, the proven use of the Disputed Domain Name is not a legitimate, noncommercial or fair use of the Disputed Domain Name within the meaning of paragraph 4(c)(iii) of the Policy, as it was clearly illegitimate, undertaken for a commercial purpose and was not fair, either to the Complainant or to internet users in general.

For all of these reasons the Respondent could not have had or acquired a right or legitimate interest in the Disputed Domain Name. The Complainant has therefore made out its prima facie case. The Respondent has not rebutted the prima facie case as it is in default and has not filed a Response.

The Complainant has therefore made out the second of the three elements that it must establish under Paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

The Panel finds that the Complainant has shown that the Respondent registered and used the Disputed Domain Name in bad faith on all the grounds relied on by the Complainant.

The Panel will deal with each of those grounds in the order in which they have been raised by the Complainant.

They are that:

• the evidence as a whole shows that the Respondent has taken the Complainant’s well-known LORO PIANA trademark and without permission or authority entirely incorporated it in the Disputed Domain Name which is virtually identical and certainly confusingly similar to the trademark; nothing could show that the registration of the Disputed Domain Name in those circumstances was anything other than in bad faith and the Panel so finds;
  
  
• in particular, it must also be concluded on the evidence that the Respondent had actual knowledge of the Complainant's well-known trademark when it registered the Disputed Domain Name and the presence of such a famous trademark in a domain name indicates that the Respondent was well-aware of the Complainant and its trademark, knew its target and hence registered the Disputed Domain Name in bad faith; indeed, the Respondent could not have carried out its subterfuge unless it had actual knowledge of the Complainant, its trademark, famous brand and products;
  
  
• as already discussed, and there is no need to repeat the evidence here as it is equally applicable to bad faith as it is to rights and legitimate interests, the Respondent has caused the Disputed Domain Name to resolve to a website that offers for sale at substantial discounts products which are purported to be genuine LORO PIANA products, but which in reality are probably counterfeit; moreover, many of the products offered on the website are products of the Complainant’s competitors; that is clearly conduct which amounts to bad faith, as it is an infringement of the Complainant’s trademark, is deceptive and misleading and is harmful to the Complainant's business and reputation;

• the Respondent’s website actively solicits visitors to its website to “Sign up” and provide their e-mail addresses, in all probability as part of a phishing scheme; this is classic bad faith use and has been well-recognized as such in many prior UDRP decisions;

• the Respondent has clearly sought to generate internet traffic to its website by seeking to mislead third parties into a false belief that it is operated or authorized by the Complainant, apparently for illegitimate and probably fraudulent purposes; it was clearly integral to the Respondent’s machinations that internet users should be induced falsely to believe that the offending website was a website of the Complainant or that it was at least authorized by the Complainant, when in fact it was neither;

• put in different words, but to the same effect, the foregoing conduct of the Respondent shows that the registration of the Disputed Domain Name, and the use to which it has been put, were calculated and intended to generate confusion within the meaning of Paragraph 4(b)(iv) of the Policy; the reason why that is so is because the Respondent clearly wanted internet users to think that its website was a website of the Complainant or one authorized by it, when it was neither.

The Complainant has therefore made out the third of the three elements that it must establish under Paragraph 4(a)(iii) of the Policy.

The Complainant has therefore established all of the elements it is required to prove under the Policy and the Respondent is in default and has not filed a Response. The Complainant is therefore entitled to the relief that it seeks, namely transfer of the Disputed Domain Name.