Domain Names

New trends in the so-called “global” market, which in principle is characterized by an absence of rules, are constantly being subjected to the scrutiny of traditional legislation, such as the Italian Trademark Law and Copyright Law.

The choice of an internet address for a web site (the so-called “domain name”) - with which products and services are offered to the public - is a delicate issue which must be the subject-matter of careful evaluation and of advice in relation thereto (just as one would do in choosing any other distinctive sign, whether in Italy or abroad). In this sense, among the novelties introduced by the Industrial Property Code, domain names - as well as being expressly recognized as a result of the principle of unity of distinctive signs enacted in the Code - are expressly foreseen as being one of those distinctive signs which deprive a trademark of its novelty (article 12).

In consideration of the fact that domain names are now considered to be distinctive signs, it is necessary to assess the possibility of commencing actions in order to regain possession of domain names which have been unlawfully registered in the names of third parties (so-called “re-assignments”).

In any event, below are set out some brief notes in relation thereto:

1) Registration of domain names

As regards “.it” domain names (www.nic.it”), any applicant with a domicile in, and a tax code or VAT number issued by one of the Community Member States, may obtain an unlimited number of registrations on the basis of the “first come first served system”. For such purpose, it is sufficient to sign a declaration (a so-called letter of undertaking of responsibility - LAR). The Registration Authority, which in Italy is the competent body for domain name registrations, does not verify the existence of third party prior rights (for example registered trademarks, business names or names of natural persons) coinciding with the domain name to be registered. In case of contrast, it is the holder of the prior right who must bring an action protecting such right.

European domain names with “.EU” extensions (eurid.eu”) and international domain names with “.COM”/ “.NET”/ “.ORG”/ “.BIZ”/ “.INFO” extensions are also registered with the same first come first served system”.

With a few limitations, other International extensions which were originally designed for particular activities have also been introduced.

In any event, we suggest evaluating a strategy of registering abroad national geographic domain names on the basis of local requisites.

2) The re-assignment of domain names which have been unlawfully registered by third parties.

In the event, instead, of your domain name having been unlawfully registered by third parties as a domain name, there are various possibilities for protecting your rights which have been supposedly infringed.

Among others, we must point out that, in our experience, the so-called “re-assignment” arbitration procedure is - for Italian, European and International domain names - a valid alternative (both in terms of costs and time) to the usual judicial proceedings, provided that it can be proved that the registrant has acted in bad faith or has committed acts of unfair competition and that the latter has no legitimate reason for registering and using the domain name conflicting with a prior right. The arbitration decision is directly enforced by the registration body and may be challenged only before the ordinary courts of the territory in question.