The Complainant is Loro Piana S.p.A. of Quarona, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is Duan Zuochun of Zhuhai, China.
The disputed domain name <loroandpiana.asia> is registered with 1API GmbH.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2012. On May 30, 2012, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain name. On June 6, 2012, 1API GmbH 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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.
The Center appointed Richard Tan as the sole panelist in this matter on July 2, 2012. 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 Complainant is a well-known manufacturer of fine wool products which include sportswear/leisurewear for men, women, and children; knitwear, outerwear, blankets and cushions, shirts, ties, trousers and overcoats, silks, linens, carpets, accessories, bags, and small leather goods; and fabrics for furnishing and interiors. It also provides its clients with a unique service of made to measure clothing.
It was established in 1924 by its founder, Pietro Loro Piana, at Corso Rolandi, in Quarona (Italy), which is still the location of the Complainant’s group headquarters today.
Since the 1940’s, the Complainant acquired a reputation as a supplier of fine fabrics for the “haute couture” industry which was a growing sector in the post-war period. In the same decade the Complainant’s group of companies entered the international market, exporting its products to Europe, Japan and the United States of America. In the following years, it became well known for its luxury goods.
The Complainant has several subsidiaries, including subsidiaries in the Republic of Korea and Japan, and distributes its products through a network of directly operated stores all over the world. In the Pan-Asia regions, it has stores in Aichi, Baku, Beijing, Busan, Changchun, Daegu, Doha, Dubai, Fukuoka, Harbin, Hiroshima, Hokkaido, Hong Kong, Hyogo, Kuwait City, Kyoto, Macau, Niigata, Osaka, Seoul, Shanghai, Shenyang, Sungnamsi, Taipei and Tokyo, amongst others.
It owns more than 700 trademark registrations worldwide, including in Asian countries, such as Japan, Republic of Korea, Viet Nam, Mongolia, Singapore and also China where the Respondent is located, consisting of, or containing the mark and words LORO PIANA, and more that 300 domain names incorporating the words “loro piana”.
The Respondent uses the disputed domain name for a parking page that features pay-per-click links, including sponsored links that resolve to third party websites offering products like cashmere products, which compete with the Complainant’s products.
The Complainant contends that it is the world’s foremost cashmere manufacturer and the largest single buyer of the finest wool. As noted above, it contends that it owns more than 700 trade mark registrations around the world, including in China, where the Respondent is based.
The Complainant also contends that it has invested considerable resources in developing its reputation in the LORO PIANA trademark. The Complainant has for several decades successfully been using its LORO PIANA mark primarily in the areas of wool and cashmere and contends that its trademark should be regarded as a well known and famous trademark.
It also owns more than 300 domain names containing the LORO PIANA trademark, including the domain names <loropiana.asia> and <loro-piana.asia>.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. It points out that the Complainant’s trademarks consist of the term “loro piana” while the disputed domain name also consists of the term “loro piana” but with the addition of the common conjunction “and” between “loro” and “piana”. The disputed domain name ends with the generic Top Level Domain (gTLD) “.asia”, which the Complainant argues is not to be taken into consideration when assessing the similarity between a trademark and a domain name, as gTLDs have no distinctive character.
The Complainant argues that the conjunction “and” which divides the words “loro” and “piana” in the disputed domain name does not alter the perception of identity between the Complainant’s trademarks and the disputed domain name.
The Complainant also argues that the name “loro piana” has no meaning in Italian or in any other language since it corresponds to the surname of the family which created the company.
The Complainant therefore contends that the disputed domain name is identical or confusingly similar to Complainant’s earlier marks, and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
The Complainant contends, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent cannot demonstrate any legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name. It has not been granted any authorization, license or other rights to use the Complainant’s marks or to register them as part of any domain name or for any other purpose. The Complainant is in no way associated or affiliated with the Respondent.
The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name for a parking page featuring pay-per-click links, including sponsored links that resolve to third party websites offering products like cashmere products, which compete with the Complainant’s products and generate revenue for the Respondent.
The Complainant also asserts that on May 24, 2012, the Complainant received an e-mail from an individual named Duan offering for sale the disputed domain name and other domain names, identical to Complainant’s trademark, in other extensions. The Complainant noticed that the person who was offering for sale these domain names was the same individual who on August 31, 2011, offered for sale the domain name <loro-piana.asia> that was transferred to the Complainant following the decision in Loro Piana S.p.A. v. Mr. Sun King, WIPO Case No. D2011-1871. Furthermore, the Complainant contends that the website corresponding to the disputed domain name is used to offer for sale the disputed domain name. When the Internet user clicks on the links appearing on the website, the user is redirected to an offer page, where an offer to purchase the disputed domain name can be submitted.
The Complainant therefore contends that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, that the Respondent has no connection with the Complainant, and the Complainant did not license or authorize the Respondent to use the disputed domain name or its trademarks, there is no evidence that the Respondent is commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In the light of the foregoing, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
The Complainant contends, thirdly, that the disputed domain name has been registered and is used in bad faith.
The Complainant contends that given the extensive and longstanding use of the LORO PIANA trademark all over the world, including in Asia and specifically in China, which is the country of the Respondent, the Respondent must have been aware of the Complainant’s trademarks prior to registering the disputed domain name. “Loro piana” is not a descriptive or generic term; it cannot be found in a dictionary, nor is it commonly used in Chinese or other languages. Loro Piana is an uncommon family name, and the fact that the Respondent chose to register the disputed domain name identical to this family name clearly demonstrates that that the Respondent must have known of the existence of the Complainant and its trademarks and intended to ride on the Complainant’s reputation by registering the disputed domain name.
The Complainant also asserts that the Respondent contacted the Complainant in order to offer for sale the disputed domain name and other domain names identical to its trademark and that the Respondent was the same individual who offered for sale the domain name <loro-piana.asia> in earlier UDRP proceedings, specifically, Loro Piana S.p.A. v. Mr. Sun King, WIPO Case No. D2011-1871, in which the UDRP panel transferred the domain name <loro-piana.asia> to the Complainant.
The Complainant further asserts that the Respondent has registered various other domain names identical to well-known trademarks and has been offering them for sale. The Complainant has produced evidence of such offers for sale of the domain name <loccitane.biz> (identical to the well-known trademark L’OCCITANE), the domain name <guerlain.info> (identical to the well-known trademark GUERLAIN), and the domain name <avene.asia> (identical to the well-known trademark AVENE).
The Complainant contends that the Respondent registered these domain names for the purpose of selling them to the legitimate owners of the well-known trademarks and there has been a pattern of such conduct.
The Complainant contends that the undisputed facts and circumstances establish that the Respondent used and is using the disputed domain name to gain profit from the pay-per-click links and to intentionally attract for commercial gain Internet users to its website or other on-line location – some of which belonging to the Complainant’s competitors – by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website; that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark, for valuable consideration in excess of its out-of-pocket costs, and that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, as demonstrated by the fact that the Respondent registered several variations of the LORO PIANA trademark, under different extensions, and has therefore clearly engaged in a pattern of such conduct.
The Complainant consequently argues that the Complainant’s business is being disrupted by the use of the disputed domain name and this use is misleading Internet users and creating a likelihood of confusion with the Complainant’s trademark and business.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.” While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
Having regard to the evidence adduced by the Complainant in relation to its registered trade mark, LORO PIANA, and in particular its 700 trademark registrations around the world, including in China where the Respondent appears to be located, and the evidence as to its long use and reputation, it cannot be in dispute that the Complainant has established rights in its LORO PIANA mark. The Panel accepts the evidence adduced by the Complainant that the LORO PIANA mark is a well-known and famous mark that it owns.
The Panel finds that the disputed domain name incorporates the registered trademark LORO PIANA and is almost identical to that mark.
The Panel finds that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The LORO PIANA mark is distinctive and is the dominant or principal component of the disputed domain name.
The addition of generic terms typically is not enough to distinguish a respondent’s domain name from a trade mark in which another has rights: see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, “automotive” did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.
Equally, the addition of a simple conjunction “and” in between “loro” and “piana” clearly does not prevent the disputed domain name from being confusingly similar to the trademark LORO PIANA.
Neither would the presence of the gTLD “.asia" be sufficient to escape a finding of substantial or confusing similarity, since that is a technical requirement of registration: see, inter alia, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015.
This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trade mark in which the Complainant has rights.
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has contended that the Respondent registered the disputed domain name after the Complainant established its rights in the LORO PIANA mark, that the Respondent is not commonly known by the disputed domain name, that the Respondent has never been known by that name or mark, that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.
The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the disputed domain name has been used to mislead and attract customers to its website for its own commercial gain. The disputed domain name according to the Complainant resolves to a website with a parking page featuring pay-per-click links, including sponsored links to third party websites that offer products like cashmere products, which compete with the Complainant’s products and generate revenue for the Respondent.
The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name.
In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name. As noted above, the Respondent has no known connection or affiliation with the Complainant, which has not consented to or authorized the Respondent’s use of the disputed domain name. There is no evidence that the Respondent is commonly known as “loro piana”. The Respondent appears to be using the disputed domain name for a website with pay-per-click links to third party websites and not for any bona fide offering of goods or services. Nor is it making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith. On the evidence, the Respondent has no license or other authorization to use the LORO PIANA trade mark. The Panel has found that the trade mark was and is a well-known mark based on the evidence adduced by the Complainant, and clearly, the Respondent must have known about the Complainant’s mark and business when registering the disputed domain name.
On the evidence, the Respondent uses the disputed domain name for a parking page that features pay-per-click links, including links to third party sites that offer products that compete with the Complainant’s products.
The Panel accepts from the evidence offered by the Complainant that the Respondent has registered the disputed domain name in a deliberate attempt to attract Internet users to its website for commercial gain by seeking to profit from the confusion with the Complainant’s mark.
The Panel accepts the Complainant’s contentions and arguments that the use of a domain name that is confusingly similar to a trademark, in order to divert traffic to a website and generate revenue, is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Further, absent any response from the Respondent, the Panel accepts the evidence offered by the Complainant that the Respondent has engaged in a pattern of conduct where it has registered various domain names comprised of well-known trademarks for improper purposes. Such pattern of conduct is evidence of bad faith.
Further, absent any response from the Respondent, the Panel also accepts that the Respondent offered for sale the disputed domain name and other domain names identical to the Complainant’s trademark.
The Panel accordingly finds from the undisputed facts and circumstances that the Respondent used and is using the disputed domain name to gain profit from the pay-per-click links and to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website; that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark, for valuable consideration in excess of its out-of-pocket costs, and that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, as demonstrated by the fact that the Respondent registered several variations of the LORO PIANA trademark, under different extensions, and has therefore clearly engaged in a pattern of such conduct.
The Panel also accepts the Complainant’s contention that the Complainant’s business is being disrupted by the use of the disputed domain name and this use is misleading Internet users and creating a likelihood of confusion with the Complainant’s trademark and business.
The Panel has no hesitation in finding on the facts and the undisputed evidence that the Respondent’s registration and use of the disputed domain name was in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 name <loroandpiana.asia> be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: July 16, 2012