Decision for dispute CAC-UDRP-108398

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 and its subsidiaries assert that they are the registered proprietors of various trademarks and other intellectual property rights, including, inter alia, the following registered trademark:

• LORO PIANA, International Reg. no. 578976, registered on 13 November 1991, in classes 23, 24 and 25;
• LORO PIANA (device), EU Reg. no. 007383136, registered on 9 June 2009, in class 9, 14 and 35;
• LORO PIANA (device), International Reg. no. 1546962, registered on 22 May 2020, in class 25. 

The Complainant, founded in 1924 by Pietro Loro Piana in Quarona, Piedmont, is a Milan-based luxury fashion brand specializing in textile manufacturing and ready-to-wear clothing. The company is one of the major producers of cashmere and other fine fibers, organized into three divisions: textiles, high fashion, and luxury goods. Under the leadership of the Loro Piana family, the company expanded internationally, developing signature fabrics such as Tasmanian wool and launching its first ready-to-wear collections and luxury goods lines in the 1980s.

Loro Piana operates 145 stores worldwide, including locations in Europe, North America, Asia, and the Middle East, with plans to expand into Australia by 2026. Its headquarters are in Milan’s Brera district, from which the company manages retail and global distribution. Over decades, the brand has cultivated a reputation for high-quality fabrics, luxury craftsmanship, and sophisticated ready-to-wear products, achieving €1 billion in sales in 2019.

The company has long-term visibility through sponsorships of sports and luxury events, including equestrian competitions, sailing regattas, the Ryder Cup, and formal uniforms for Juventus FC. 

The registration dates of the disputed domain names are listed as follows:

<loropianashoes.com>:  18 December 2025;
<loropianadupe.com>:  5 June 2025.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name 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 claims rights in the LORO PIANA trademark through its international trademark registration. By virtue of its trademark registrations, the Complainant has proved that it has rights in the mark under paragraph 4(a) of the Policy. See Avast Software s. r. o. v Milen Radumilo, 102384, (CAC 2019-03-12).

Furthermore, the Complainant contends that the addition of terms such as “shoes“ and “dupe” do not alter or diminish the distinctive character, reputation, or attractiveness of the LORO PIANA marks. These additions do not alter or diminish the distinctive character, reputation, or attractiveness of the LORO PIANA marks.

By doing a side-by-side comparison, the Panel finds that the disputed domain names are indeed confusingly similar to the Complainant’s LORO PIANA trademark. The presence of additional terms and the gTLDs do not negate the distinctiveness of the mark or prevent a finding of confusing similarity. See paragraph 1.8 and 1.11 of the WIPO Overview 3.1.

For the foregoing reasons, the Panel finds the Complainant has satisfied paragraphs 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). More specifically, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and the burden of proof then shifts to the Respondent to show it does have rights or legitimate interests. See PepsiCo, Inc. v Smith power production, 102378, (CAC 2019-03-08) ("The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.").

The Complainant asserts that the Respondent is not an authorized dealer, agent, distributor, or reseller, and had no authorization to register or use the LORO PIANA trademark in any domain name. Both disputed domain names resolve to the same mirror website where LORO PIANA products are sold or offered as replicas, prominently featuring the complainant’s trademarks. Some pages explicitly indicate that the products are replicas or sold at heavily discounted prices.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. See Harley-Davidson Motor Company, Inc. v. Lina, Case No. 106758 (CAC, Sept. 4, 2024) (“Past panels have agreed that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See also paragraph 2.13 of the WIPO Jurisprudential Overview 3.1.

Accordingly, the burden shifts to the Respondent to demonstrate any rights or legitimate interests in the disputed domain names. However, the Respondent has failed to submit a response within the required timeframe to rebut the Complainant’s assertions.

For the foregoing reasons, the Panel finds the Complainant has satisfied 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 Complainant asserts that both disputed domain names incorporate the entire LORO PIANA trademark, a well-known and distinctive mark, without any authorization. LORO PIANA is a fanciful term derived from the founder’s surname, making it unlikely that the Respondent was unaware of the trademark at the time of registration. The corresponding websites prominently feature LORO PIANA products, further indicating knowledge of the Complainant’s rights.

The Complainant further contends that the disputed domain names redirect to a mirror website where LORO PIANA products are offered, including replicas at discounted prices. Such use is likely to mislead Internet users into believing the site is associated with the Complainant, creating confusion as to source, sponsorship, or affiliation. Established UDRP precedent confirms that using a domain containing a well-known trademark to attract users for commercial gain constitutes bad faith

Upon reviewing the website screenshots associated with the disputed domain names, and taking into account the Respondent’s failure to submit a response within the required timeframe, the Panel concludes that the Respondent was likely aware of the Complainant’s LORO PIANA trademark at the time of registration. See New Era Cap, LLC vs Owen Boyle, Jessica Cross, Kieran Simmons, Emma Hilton and Mohammed Hurst, 107980 (CAC 2025-10-31) ("The Panel is convinced that the Respondent registered the disputed domain names with full knowledge of the Complainant and its rights in the Trademark. This finding is supported by the fact that the Trademark has been well established for decades and that the Respondent refers to the Complainant and suspected counterfeit goods for sale. Regarding bad faith use, by using the disputed domain names in connection with an online store offering suspected counterfeit goods for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.")

For the foregoing reasons, the Panel finds the Complainant has satisfied 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 FINDINGS - CONSOLIDATION:

Pursuant to paragraph 10(c) of the Rules that a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. The Rules further state that Respondent means the holder of a domain name registration against which a complaint is initiated. The Complainant submitted a request for consolidation that all the disputed domain names were under common control by the same Administrative, Technical and Billing contact, managed by the same Registrar and point to the same website:

The Respondent did not submit a timely Response within the required period of time.

Upon reviewing the WHOIS information for the disputed domain names, the Panel finds that all the domain names are under common control by the Respondent. On this basis, no consolidation was necessary under paragraph 3(c) of the Rules.