The Complainant is Loro Piana S.p.A., Italy, represented by Studio Legale Bird & Bird, Italy.
The Respondent is Contact Privacy Inc. Customer 1248678366, Canada / Ha, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2021 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2021.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2021.
On November 2, 2021, the Center informed the Registrar that the Center’s September 23, 2021 request for registrar verification contained a typographical error in the identification of the disputed domain name, and asked for confirmation that the information provided in the Registrar’s response related to the disputed domain name. The Registrar confirmed that the originally provided information was for the disputed domain name, and remained accurate and complete.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 8, 2021. 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 BackgroundThe Complainant is well known in the textile industry, with over six generations of experience in that industry. The Complainant is present worldwide with its lines of textiles, clothing, bags, shoes and fashion accessories, having a network of sales points in Italy, Europe, America, Asia, and the Middle East that includes more than 170 flagship stores.
The Complainant is the owner of many trademark registrations throughout the world, including European Trademark Registration No. 18162715 (registered on May 22, 2020), and United Kingdom Trademark Registration No. 1566915 (filed on March 25, 1994, and entered into the register on March 3, 1995) both for the stylized trademark LORO PIANA.
The Complainant operates its official website at “www.loropiana.com”.
The disputed domain name was registered on November 14, 2020. The Complainant has provided undated screenshots showing that the disputed domain name resolved to a website displaying the words “Loro Piana Clothing Store Open 24 hours”, the stylized LORO PIANA trademark, and some photographs of jackets for sale that the Complainant states are not original LORO PIANA garments. As of the date of this decision, the disputed domain name resolves to a website that appears to have the same content as the website shown in the screenshots.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name reproduces the Complainant’s trademark LORO PIANA, followed by the term “jackets” and the generic Top-Level Domain (“gTLD”) “.com”; (ii) the term “jackets” is a descriptive connotation that is related to the core business of the Complainant (the production and retail of fine garments and fashion accessories), which reinforces the confusing similarity of it with the Complainant’s trademark and corroborates the impression that the disputed domain name belongs to, or is affiliated with, the Complainant; and (iii) consumers would be led to think that the disputed domain name is owned by the Complainant and has been specifically created by the Complainant to operate an online official store for LORO PIANA-branded garments.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has neither authorized nor given its consent to anyone to register or use the disputed domain name; (ii) the disputed domain name reproduces the Complainant’s LORO PIANA trademark, combined with a descriptive term (“jackets”) that is connected with the Complainant’s business; (iii) the Respondent cannot be known by the disputed domain name, because it refers to the LORO PIANA trademark in which only the Complainant has rights, and there are no trademark applications or registrations for LORO PIANA in the name of the Respondent; and (iv) the disputed domain name resolves to a website that displays the Complainant’s LORO PIANA trademark, the expression “clothing store”, and pictures of some jackets that are not original LORO PIANA garments.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the LORO PIANA trademark is highly distinctive and internationally renowned, and the Complainant’s rights in the trademark were established well before the disputed domain name was registered; (ii) the disputed domain name reproduces, without any authorization or approval, the Complainant’s registered trademark LORO PIANA; (iii) the website resolving from the disputed domain name looks like an official LORO PIANA store, displays the Complainant’s name and registered LORO PIANA trademark, and falsely purports to sell authentic LORO PIANA jackets; (iv) the website resolving from the disputed domain name contains a misleading footnote (“Header photos by Loro Piana”), which falsely suggests a connection with the Complainant; (v) the Respondent has consciously and deliberately incorporated the Complainant’s LORO PIANA trademark in the disputed domain name to attract consumers for commercial gain, taking unfair advantage of the reputation and distinctiveness of the Complainant’s trademark; (vi) since the Complainant has five flagship stores in London, where the Respondent is located according to the WhoIs information provided by the Registrar, the Respondent cannot but be well aware of the notoriety of the Complainant’s trademark; (vii) Internet users are distracted away from the official website and products of the Complainant, and the Respondent is potentially obtaining revenues or other unfair advantages by attracting visitors who are looking for the Complainant; and (vii) the Respondent’s holding of the disputed domain name prevents the Complainant from reflecting its LORO PIANA trademark in the same domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarOnce the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the textual component of the Complainant’s stylized trademark LORO PIANA, followed by the word “jackets”. The textual component of the Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the word “jackets” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its LORO PIANA trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name resolves to a website that contained the Complainant’s name and stylized trademark, and which purported to offer the Complainant’s jackets, in an attempt to impersonate the Complainant. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name was registered many years after the Complainant first registered its LORO PIANA trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the disputed domain name consists of the textual component of the Complainant’s trademark followed by the word “jackets”, and that it has been used in an attempt to impersonate the Complainant. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Andrew Christie
Sole Panelist
Date: November 24, 2021