Decision for dispute CAC-UDRP-108397

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

The Complainant is the owner of the trade marks LORO PIANA registered, inter alia, as: 

- International Reg. no. 578976 since November 13, 1991, in classes 23, 24 and 25; 

- EU Reg. no. 007383136, since June 9, 2009, in class 9, 14 and 35; and

- International Reg. no. 1546962 since May 22, 2020, in class 25.

The Complainant is an Italian luxury fashion brand specialized in textile manufacturing and ready-to-wear clothing headquartered in Milan. Considered one of the world largest cashmere manufacturers and a leading artisan company processing luxury fiber the company reached the 1-billion-euro sales mark in 2019.

Since its start as a merchant of cashmere, vicuña, linen and merino fabrics, The Complainant expanded to design knitwear, leather goods, footwear, fragrance and related accessories. The company has three divisions: textiles, high fashion and luxury goods. Its core branding includes the Loro Piana family signature and coat-of-arms, depicting a European beech tree, a golden eagle, and two diagonal Stars of Italy, framed by flower thistles. 

Founded in 1924 by Pietro Loro Piana, an Italian engineer, in the Quarona commune of Piedmont, the company have been for decades been leaded by Loro Piana Family. After taking up leadership of the company in the 1960s, Franco Loro Piana, grandson of Pietro, started to export high-quality fabrics to Europe, America and Japan; during the 1970s, the company was directed by Franco's sons, Sergio and Pier Luigi. Their focus was on top-quality fabric development, including cashmere and extra-fine wools Sergio and Pier Luigi's research gave birth to the Tasmanian fabric. In the 1980s, Sergio and Pier Luigi started to diversify the business, launching their first ready-to-wear collection and creating the luxury goods division. By the late 1990s, the Complainant was selling smart tailored jackets, wool overcoats and finely woven cashmere sweaters in its shops in Milan and New York. 

Since 2013, the company has been majority-owned by Moët Hennessy Louis Vuitton (LVMH), a French multinational fashion conglomerate, through a $2.6 billion cash and debt deal. 

In December 2013, LVMH announced that Antoine Arnault would become chairman of the Complainant. In 2017, LVMH acquired another 5% stake in the company. Since 2022, the Complainant has established its headquarters at Cortile della Seta in Milan's Brera district, from which are managed its stores and distribution: the first Loro Piana retail store opened in 1999 in Milan; as of July 2022, the brand distributes its products in Europe, North America, the Middle East, China, South Korea, Indonesia and Japan. It has a total of 145 stores worldwide.

During its history, the Complainant has sponsored a range of sports competitions, especially in horse riding and sailing, from the Piazza di Siena horse race to the Superyacht Regatta in Porto Cervo and races in Saint-Tropez and St. Barts, among others. 

Since 2016, the Complainant has been providing the official uniform of the European team competing at the biennial Ryder Cup. In 2021, the brand entered into an agreement with soccer team Juventus FC to provide the men’s team with formal off-field uniforms, extending the collaboration to the club’s female division the following years.  

Due to its longstanding use, and the huge promotional and advertising investments, the LORO PIANA trademark is well-known. Previous panelists in other UDRP procedures have considered the LORO PIANA trademark as enjoying an extensive reputation. The Complainant is very active on social networks.

The disputed domain name registered in 2025 redirects to a web site using the Complainant's trade mark dedicated to a third party: a premium textile trading brand based in Dubai.  

Complainant

Under the first UDRP element, the straightforward side-by-side comparison of the disputed domain name and the textual components of the mark on which this Complaint is based makes it evident that the LORO PIANA Trademarks are recognizable within the disputed domain name and, thus, the disputed domain name is confusingly similar to a mark in which the Complainant has rights.  

While each case is judged on its own merits, in UDRP cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark under the first element of the Policy.

Comparing the disputed domain name <loropianadubai.com> to LORO PIANA trademark and to the domain name <loropiana.com> (Complainant’s main website, registered since September 14, 2001) the only difference is represented by the addition of the geographical term “dubai”. Such element neither affects the attractive power of LORO PIANA trademark, nor is it sufficient to prevent the finding of confusing similarity between the disputed domain name and complainant mark. On the contrary, it may reinforce the risk of confusion and be considered a website dedicated to a local partner of LORO PIANA.

Finally, the top level “.com” is merely instrumental to the use of the Internet so any domain name remains confusingly similar despite its inclusion. 

Hence, the first requirement of the Policy is satisfied.

The Respondent has no rights or legitimate interests in respect of the disputed domain name; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

Paragraph 4(c) of the Policy lists a series of circumstances, which, if satisfied, prove that the Respondent owns rights or legitimate interests in the disputed domain name. 

These include (i) the Respondent’s use of, or demonstrable preparations to use, the domain name(s) or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; and (iii) the legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. 

Despite the burden of proving the Respondent’s lack of rights or legitimate interest lying on the Complainant, it is generally recognized that such burden cannot be excessively cumbersome and certainly not impossible. “Therefore, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant”.

The Respondent is not an authorized dealer, agent, distributor or reseller of the Complainant, nor is it authorised to register and use the Complainant's trademark in a domain name.

The disputed domain name resolves to a website dedicated to Fabric Gallery, a textile trading brand by Kings Man 1984 FZE LLC based in UAE, specializing in luxury Italian and English fabrics, publishing also complainant’s trademarks (along with complainant competitors’ brands), without any disclaimer of non-affiliation.  

There is no fair use. The Respondent undoubtedly fails to accurately and prominently disclose its relationship with the trademark holder, thus generating a clear likelihood of confusion for Internet users. 

The disputed domain name was registered and is being used in bad faith; (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

In accordance with paragraph 4(a)(iii) of the Policy in order to succeed in a UDRP proceeding, the Complainant must prove, as a third and last requirement, that the Respondent registered and used the disputed domain name in bad faith. 

As far as registration in bad faith is concerned, the Respondent has registered a domain name that contains entirely the Complainant's trademark without any authorization. LORO PIANA is a fanciful word (constituting the surname of the founder) which has no meaning; therefore, it is very hard to imagine that the Respondent was unaware of the LORO PIANA rights at the time of the registration of the disputed domain name. Additionally, LORO PIANA trademark and products are also featured on the Respondent's website demonstrating its knowledge. 

With reference to the use in bad faith, the disputed domain name has been used in connection with a website dedicated to a brand different from LORO PIANA, and using LORO PIANA trademarks (also to identify a group of products), evidently in order to generate traffic to the website by misleading third parties that the associated website is operated or at least authorized by the Complainant, for illegitimate and probably fraudulent purposes. 

Therefore, Complainant deems paragraph 4 (b) (iv) of the Policy applicable to the present case since Respondent is intentionally attracting Internet users for commercial gain to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of said website. 

The disputed domain name has been registered and used in bad faith. 

Respondent 
No administratively compliant Response has been filed.

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 UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name is confusingly similar to the Complainant's prior registered trademark mark including it in its entirety, adding only the geographical generic term 'Dubai' and the gTLD .com which do not prevent said confusing similarity. 

The Respondent is not authorised by the Complainant and not commonly known by the disputed domain name. 

The Respondent is pointing the name to a web site offering competing products and services and using the Complainant’s trade mark without making it clear there is no relationship with the Complainant which is confusing and so is not a bona fide offering of goods or services. The use is commercial so is not legitimate non commercial or fair use.

The Respondent has not answered this Complaint and has not rebutted the prima facie case evidenced by the Complainant.

The Respondent's use is causing confusion for commercial gain and disrupting the Complainant's business with its competing activity.