Loro Piana S.p.A. v Hefang Zhou / Rvchws Tbcu / Hbhh Unbni / Ybcsh

WIPO Case No. D2022-4343

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Loro Piana S.p.A. v. Hefang Zhou / Rvchws Tbcu / Hbhh Unbni / Ybcsh
Unwqo

Case No. D2022-4343

1. The Parties

The Complainant is Loro Piana S.p.A., Italy, represented by Barzanò & Zanardo Milano SpA., Italy.

The Respondent is Hefang Zhou, China / Rvchws Tbcu / Hbhh Unbni / Ybcsh Unwqo, Hong Kong, China.

2. The Domain Names and Registrars

The disputed domain names <frloropiana.com>, <loropianasale.com>, <loropianastore.xyz> are registered with Name.com, Inc. The disputed domain name <loro-piana.store> is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2022. On November 15, 2022, the Center transmitted by email to the Registrars a request for Registrar verification in connection with the disputed domain names. On November 16, 2022, the Registrars

transmitted by email to the Center its verification response disclosing registrant and contact information for the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 22, 2022.

the disputed domain names which differed from the named Respondents and contact information in the
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 November 29, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2022.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 22, 2022.

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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.

The Complaint concerns the four disputed domain names set out above. Three of them, <frloropiana.com>, corresponding public WhoIs.

<loropianasale.com> and <loropianastore.xyz>, are stated as registered by Whois Agent through Domain

For the fourth disputed domain name <loro-piana.store>, the registrant details are described as “Redacted
For Privacy”, according to the information of the corresponding public WhoIs.

The Complainant rightly points out that that under paragraph 3 of the Rules a single complaint may relate to more than one domain name provided that the domain names are registered by the same domain-name holder and that paragraph 10(e) of the Rules grants the Panel a general power to consolidate multiple domain name disputes.

The conditions for consolidation are summarized in WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition (“WIPO Overview 3.0”) as;

i.         the domain names or the websites to which they resolve are subject to common control; and

ii.         the consolidation would be fair and equitable to all parties.

In assessing common control, the Panel is required to take into consideration all the relevant circumstances of the case. On the evidence adduced by the Complainant it is apparent that;

a.	There is common registration of three of the disputed domain names through Domain Protection Services Inc.
b.	All four of the disputed domain names were registered in less than 10 days in July 2022.
c.	All four of the disputed domain names are registered with the same server: CLOUDFARE.
d.	The disputed domain names are composed of identical or similar words.
e.	On the evidence set out in Annexes 2, 3 and 4 to the Complaint and considered in Section 4 below all of the disputed domain names resolve to identical or similar websites, with identical promotional wording and that in each case the Respondent claims to have its customer headquarters in Montgomery, Alabama.

The Complainant therefore submits that all four of the disputed domain names are prima facie either owned by the same individual or are subject to common control.

In the case of the fourth disputed domain name <loro-piana.store>, it is apparent that although details of the registrant are publicly redacted all the other factors relied upon and evidencing common control exist.

Taking into account the absence of a Response, the Panel finds that there is sufficient evidence to support a finding of common control.

The Panel has also considered whether it is just and equitable for the complaints in respect of all four disputed domain names to be dealt with at the same time by the same panel in a single proceeding. The Panel finds that it is so, taking into account the similarity of the disputed domain names, the common nucleus of facts and common legal issues and the avoidance of unnecessary time, effort and expense in doing so.

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Accordingly, the Panel proceeds to determine the Complaint in respect of all four of the disputed domain names.

4. Factual Background

The Complainant is an Italian company specializing in clothing and textile products. It is regarded as one of the largest cashmere manufacturers and the world’s leading artisan company processing luxury fibres.

It has a total of 152 stores of which it directly operates 135. It has also secured locations for units in Doha,

Qatar, and Palo Alto, California to open over the next 12 months.

In 2019, its sales reached 1 billion euros. 2021 revenues are expected to exceed that figure.

It has more than 20 stores in the United States including three in New York.

Due to longstanding use of the mark LORO PIANA, it has become well-known throughout the world.
Previous UDRP panel decisions including Loro Piana SpA v Kirill Kirillov, Private Person WIPO Case No.

D2022-0131, cited by the Complainant, have found the mark to have an established reputation.

The Complainant relies upon three of its registered trade marks;

European Union trade mark LORO PIANA plus heraldic device in class 25, No. 018162715 registered
December 10, 2019.

European Union trade mark LORO PIANA plus heraldic device in classes 9, 14 and 35, No. 007383136 registered June 9, 2009.

International trade mark (designating inter alia the United States of America) LORO PIANA plus heraldic device in class 25, No. 1546962 registered May 22, 2020.

Copies of the certificates of registrations for the above marks are exhibited at Annex 7 to the Complaint.

The disputed domain names were all registered in July 2022 which is after the dates of registration of the trade marks relied upon by the Complainant.

In the absence of a Response, the Panel finds the above evidence adduced by the Complainant to be true.

5. Parties’ Contentions

A. Complainant

The Complainant submits;

i.         On the evidence all four of the disputed domain names contain the Complainant’s mark LORO PIANA and are confusingly similar to that mark.

ii.         In respect of all four disputed domain names there is no evidence that the Respondent has any rights or legitimate interests.

iii.        The evidence of the use of all four of the disputed domain names by the Respondent on the respective websites establishes registration and use in bad faith by the Respondent.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established on the evidence set out in section 4 above that it is the owner of registered trade mark rights within the countries of the European Union and internationally including the United States for the mark LORO PIANA and that these marks were registered before the dates of the registration of all four of the disputed domain names in July 2022.

All four of the disputed domain names incorporate the mark LORO PIANA. In each case, the mark LORO
PIANA is combined with words or a verbal element, being the mark LORO PIANA recognizable.

The Complainant also rightly recognizes that the Top-Level Domain name “.com” has no impact on confusing similarity and has what it describes as a technical function to be disregarded in assessing confusing similarity.

The Panel, having considered the Complainant’s submission and evidence, finds that the four disputed domain names are confusingly similar to the Complainant’s registered trade marks LORO PIANA within paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant relies upon the following to support its submission that the Respondent has no rights or legitimate interests in respect of the disputed domain names;

i.         The Respondent is not an authorized dealer, agent, distributor or reseller of LORO PIANA products;

ii.         The Respondent has not been authorized (by the Complainant) to register and use the trade mark LORO PIANA within a domain name;

iii.        The disputed domain names lead to active websites (as exhibited in Annexes 2, 3 and 4 to the Complaint) which reproduce images of the Complainant’s official marketing campaigns. The layout adopted is similar to that of the Complainant’s official website which uses the trade mark and which the Complainant has not consented to.

WIPO Overview domain name.

In these circumstances, as rightly submitted by the Complainant (following section 2.1 of
3.0), the Complainant is required to make out a prima facie case that the Respondent lacks right or
legitimate interests. Once a prima facie case has been made, the burden of production then passes to the

The Panel is satisfied on the evidence that the Complainant has shown a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a Response, the Respondent has failed to produce evidence demonstrating that it has rights or legitimate interests in respect of the four disputed domain names. To the contrary, the evidence shows that the disputed domain names were registered and are being used with the aim of misleading potential customers that goods purchased from websites accessed through the disputed domain names were contrary to the fact of the Complainant’s manufacture or source. In this regard, the composition of the disputed domain names reproducing the Complainant’s trademark with the following terms creates a risk of implied affiliation:

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In the case of <frloropiana.com>, the mark is combined with the letters “fr” which is an established reference to France directing customers to a specific location.

In the case of <loro-piana.store> and <loropianastore.xzz>, there is in both cases a descriptive reference to “store”, as in a store selling clothing originating from a particular manufacturer or wholesaler; in this case a LORO PIANA store.

In the case of <loropianasale.com>, there is a descriptive reference to the word “sale” combined with LORO
PIANA as goods sold by the Complainant.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the four disputed domain names within paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In summary the Complainant submits that the Respondent registered the four disputed domain names all of which contain its “very well-known” trade mark LORO PIANA. This is demonstrated by the fact that all of the disputed domain names consist of the trade mark plus terms such as “store” or “sale” which a potential

customer may very well associate with the Complainant’s activity.

The Panel has considered the evidence of the websites accessed by using the disputed domain names.

Each website reproduces photographs (in which the Complainant confirms that it owns copyright) of the
Complainant’s products or taken from its advertising material. At Annex 2, <frloropiana.com> accesses the
Complainant’s “selection chapeaux”, <loro-piana.store> accesses the Complainant’s handbags,
<loro-pianasale.com> accesses the Complainant’s handbags and <loropianastore.xyz> displays an extract

from the Complainant’s photograph of a jumper and a lady holding a handbag.

The Panel has also considered the evidence set out at Annex 3 to the Complaint which shows that for each
website associated with all four of the disputed domain names the same wording taken from the
Complainant’s own website is used. Each website begins: “…….known for providing Quality, Superior,
Customer Service and Product Selection” and continues with the same headings “Customer Experience” and

“Our Pledge to You” and concludes “Thank you for being a customer !”.

Similarly, Annex 4 contains evidence of the Respondent’s websites with identical wording to that of the
Complainant’s websites relating to delivery and shipping arrangements.

The Panel is therefore satisfied on the basis of this evidence and in the absence of a Response and as submitted by the Complainant that all four of the disputed domain names were registered and are being used to “intentionally attract for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site and of a product or service on the Respondent’s web site or location”.

The Panel therefore finds that the four disputed domain names were registered and are being used by the
Respondent in bad faith within paragraph 4(a)(iii) of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <frloropiana.com>, <loropianasale.com>, <loro-piana.store> and

<loropianastore.xyz> be transferred to the Complainant.

/Clive Duncan Thorne/
Clive Duncan Thorne
Sole Panelist
Date: January 5, 2023.