WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Loro Piana S.p.A. v. Harry Hill Case No. D2009-0085 1. The Parties
The Complainant is Loro Piana S.p.A., of Quarona, Italy, represented by Barzanò & Zanardo, of Roma SpA, Italy.
The Respondent is Harry Hill, of New York, New-York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2009. On January 23, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 23, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 18, 2009.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on February 25, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant (“Loro Piana S.p.A” or, alternatively, “Loro Piana”) is one of the largest suppliers worldwide of cashmere and luxury woolens. It was established in 1924 by Pietro Loro Piana at Corso Rolandi, in Quarona (VC), which remains the Group's headquarters to the present day.
According to the Complaint, the Complainant has acquired a reputation as supplier of fine fabrics for the “haute couture” industry and has exported its products to Europe, Japan and America. It became well-known in the luxury goods sector specifically with reference to cashmere products. In 1993, it opened its first dedicated store in New York. Shortly thereafter, other dedicated locations were established in the United States (such as in Boston, Chicago, Palm Beach, Bal Harbour, Coral Gables, Dallas, Denver, Aspen, Las Vegas, Costa Mesa, Beverly Hills, and San Francisco). To date, Loro Piana owns 119 dedicated stores worldwide that distribute luxury sportswear and leisurewear for men, women and children. The stores sell knitwear, accessories, home collection goods, bags, shoes and small leather goods as well as made-to-measure services.
The Complainant has filed Italian and United States trademark registrations in its own name. Copies of such registrations, starting with Italian trademark Registration for LORO PIANO on December 30, 1975, and US Registration for LORO PIANO with effect since September 27, 1982, were attached to the Complaint.
The disputed domain name was registered by the Respondent on July 10, 2008. The Complainant became aware of the registration shortly thereafter and by letter dated August 8, 2008, requested the Respondent to desist using the domain name and to transfer it to the Complainant. No response was received from the Respondent. A reminder was sent on October 10, 2008, and again no response was received.
As noted in the Procedural History, after the Complaint was served on the Respondent, no response was filed and on February 18, 2009, the Center notified him of his default. 5. Parties' Contentions
Since only the Complainant has filed submissions, the Panel will record them in summary form. A. Complainant
The Complainant begins by pointing out that the disputed domain name includes its trademark in its entirety and therefore it fulfills the requirements of paragraph 4(a)(i) of the Policy. It notes further that the mere adding of the descriptive word “blog” does not change the likelihood of confusion. It notes that various WIPO UDRP decisions have found that attaching non-distinctive matter, such as “blog” and the gTLD “.com” to a trademarked name does not change the likelihood of confusion. Indeed, it argues, in this case conjoining the word “blog” with the Complainant's registered trademark adds to the confusion because the Internet user is led to believe that the disputed domain name corresponds to the Complainant's official blog.
The Complainant argues further that the LORO PIANA sign has been used as its trademark from the beginning and as a result of its long and substantial use; it is widely recognized by the public, both in Italy and abroad. The LORO PIANA sign has, therefore, become a famous trademark “because it is indelibly impressed into the consciousness in connection with the field of luxury woolen clothes and cashmere”. Yet, at the same time, the trademark refers to a family name and it has no other possible application to goods other than those produced by the Complainant.
Turning to the question of whether the Respondent has any rights or legitimate interests in respect of the domain name, the Complainant says that it does not. Since the disputed domain name was registered, the corresponding webpage has been used through as a “parking page” where different sponsored links are published. A print-out of the Respondent's Internet website homepage was attached to the Complaint as an annex.
It is observed further that after the Complainant became aware of Respondent's registration of the contested domain name, it sent a cease and desist letter, asking that the domain name be transferred to it. Citing other WIPO UDRP cases, the Complainant asks the Panel to draw the inference that the Respondent has no rights or legitimate interests in the name. It points out that his name is totally unrelated to the LORO PIANA mark, and that there is no evidence of his use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or service. Nor has he evidently registered (nor have any pending registration applications in any way related to) the LORO PIANA trademark in the USA, the European Community or elsewhere, for that matter.
Turning to the issue of whether the Respondent registered the disputed domain name in bad faith, the Complainant argues that this is the case. In its view, the Respondent has not carried out any bona fide activity under the disputed domain name. Rather, he has registered in bad faith. In this respect, the Respondent, in the light of the Complainant's registration and the reputation of its trademarks, must have been aware of the registration and use of such marks by the Complainant at the moment of registering the disputed domain name.
Moreover, the disputed domain name is used via a “parking page” which contains sponsored links to third party web sites which operate in the same field of activity of Complainant. According to the Complainant, the Respondent is intentionally attempting to attract for commercial gain, Internet users to one or more competing websites. It points out that a competitor's products are listed on the webpage. Thus, the Complainant's business is being disrupted by the use of the disputed domain name which is misleading internet users and creating a likelihood of confusion with the Complainant's trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of the disputed domain name, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
In the present case, the Panel is of the view that the record contains abundant evidence of each of the three requisite elements. A. Identical or Confusingly Similar
First, the Complainant claims, and the Panel has verified to its satisfaction, that the Complainant is the owner of the LORO PIANO mark in Italy and the United States.
The disputed domain name takes the Complainant's trademark and simply adds “blog” to it. In the Panel's view, this does little to differentiate the domain name from the trademark. To the contrary, it makes it more confusingly similar. The Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has also proven this. There is no evidence of the Respondent's 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. The Respondent has no apparent connection with the Complainant, nor has it been licensed or authorized by it to use the disputed domain name.
The disputed domain name is evidently not the Respondent's name, nor is there any evidence that the Respondent is commonly known by that name. Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Third, it must be shown that the disputed domain name has been registered and is being used in bad faith. The Respondent's domain name serves to divert users to a website which contains sponsored links. In the Panel's view, the Respondent has misled consumers by diverting Internet traffic away from the Complainant's website to its own.
In the circumstances, the Panel has no doubt whatsoever in concluding that the domain name was registered and used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Sole Panelist
Dated: March 11, 2009
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