Decision for dispute CAC-UDRP-107882

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 has evidenced to be the owner of various trademarks relating to its company name and brand LORO PIANA, including, but not limited to the following:

-    word/device trademark LORO PIANA, European Union Intellectual Property Office (EUIPO), registration No.: 007383136, registration date: June 9, 2009, status: active;
-    word/device trademark LORO PIANA, EUIPO, registration No.: 018162715, registration date: May 22, 2020, status: active;
-    word trademark LORO PIANA, International Registration (World Intellectual Property Organization), registration number: 1546962, registration date: May 22, 2020, status: active.

Also, the Complainant has substantiated to own since 2001 the domain name <loropiana.com>, which resolves to the Complainant’s main website at “www.loropiana.com”, used to promote the Complainant’s products and related services in the fashion industry.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.
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 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 UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

First, the Panel has accepted this single Complaint relating to four disputed domain names registered by three different Respondents given that e.g. (1) all disputed domain names were set up in a similar way by combining the Complainant’s entire LORO PIANA trademark with other descriptive terms or additional components and under the same generic top-level domain .shop, and (2) all disputed domain names were registered in a close temporal connection (e.g. between July 9 and 18, 2025) through the same Registrar, allowing this Panel to conclude that all four disputed domain names are subject to some common control (paragraph 3(c) of the Rules).

Second, the Panel finds that all disputed domain names are confusingly similar to the Complainant’s LORO PIANA trademark, as they incorporate the latter entirely, simply added by other descriptive terms such as “it” (referencing Italy where Complainant is headquartered), “online” and “top”, or other additional components such as the letter “s”, respectively. Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered at least confusingly similar to that trademark. Also, it has been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of descriptive or other terms, such as e.g. the terms “it”, “online” and “top” or the letter “s”, is not capable to dispel the confusing similarity arising from the entire incorporation of the Complainant’s LORO PIANA trademark in the disputed domain names.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Third, the Complainant contends, and the Respondents have not objected to these contentions, that the Respondents have neither made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor are the Respondents commonly known under the disputed domain names, nor are the Respondents making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. The Respondents have not been licensed or otherwise authorized to use the Complainant’s LORO PIANA trademark, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondents’ names somehow correspond with the disputed domain names and the Respondents do not appear to have any trademark rights associated with the fanciful term “loro piana” on their own. Finally, the Complainant has demonstrated that, while the disputed domain names resolved at some point in the past to mirror pages of the Complainant’s official website at “www.loropiana.com”, they were passively held when the Complaint was filed. UDRP panels, however, agree that the mere registration of a domain name does not by itself automatically confer rights or legitimate interests therein.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that, therefore, the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Finally, the Panel holds that the disputed domain names were registered and are being used by the Respondents in bad faith. It is obvious from the circumstances to this case that the Respondents were perfectly aware of the Complainant’s fashion business and its rights in the LORO PIANA trademark when registering the disputed domain names, and that the latter are directly targeting such trademark. Such finding takes, among others, into consideration that the disputed domain names resolved at some point in the past to mirror pages of the Complainant’s official website at “www.loropiana.com”, which is a particular strong indication that the Respondents knew of the Complainant and its prior rights in the LORO PIANA trademarks when registering the disputed domain names and that the use of the latter, therefore, is of a bad faith nature. Also, there is a consensus view among UDRP panelists that a passive holding of a disputed domain name may, in appropriate circumstances, be consistent with the finding of bad faith, in particular in circumstances in which, for example, a complainant’s trademark is well-known, and there is no conceivable use that could be made of the disputed domain name and would not amount to an infringement of the complainant’s trademark’s rights. In the case at hand, in the absence of any other reasonable explanation as to why the Respondents should rely on the disputed domain names which include the Complainant’s undisputedly well-known and fanciful LORO PIANA trademark entirely, and given that the Respondents have brought forward nothing in substance relating to the intended use of the disputed domain names, the Panel finds that the Respondents have registered and are making use of the disputed domain names - even if passively held - in a manner which takes unjustified and unfair advantage of the Complainant’s LORO PIANA trademark’s reputation and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).