News Trademarks, Domain Names, Copyright 2002

Domain names: Decisions (and indecisions).

1) WIPO Arbitration and Mediation Center decisions (DOMAIN.COM /.NET /.ORG).

2) Domain Dispute decisions for Italian domain names (DOMAIN.IT).

3) Italian Courts' decisions.

COURT OF PARMA - 26th February 2001

The domain name, besides technically acting as an Internet address, serves, in its identifying part (what is written before the last dot, so called second level), to single out, in the relationships with customers, the owner of the website and the services offered on the latter.
As a result, the domain name can be regarded as the company's new distinctive sign, which might end up in conflict with the other distinctive signs and, in particular, interfere with the scope of protection recognised to the registered trademark, on the grounds of the principle of unity of distinctive signs set forth by art. 13 of trademark law.

COURT OF SALERNO - 30th June 2000

This order, besides recognising the similarity in a commodity sense between “batteries for cars/motorbikes” and “batteries” (Duracell), also points out as follows:
“…the use of the renown trademark as a domain name or on an Internet site, also in respect of goods and services which are not similar to those protected by the same trademark, infringes the owner's trademark rights, in that it involves the immediate advantage of relating its activity to the one of the trademark owner, exploiting the sign's renown and taking unduly advantage from it”.
The Respondent, against which the seizure, the withdrawal and the injunction for all the goods as well as the publication of the judgement in Corriere della Sera was decided, was also ordered:
1) To remove the counterfeited name from its site;
2) To publish the judgement on its website.

COURT OF REGGIO EMILIA - 30th May 2000

The dispute between domain names and formerly filed/registered trademarks shall be ruled by the same provisions which regulate the relationships among distinctive signs; the owner of a trademark can therefore oppose the use of a domain name similar to or identical with his one/ones provided that the identity or similarity of goods and services can lead to a risk of confusion which may consist in a risk of association, as well.
The simple registration of a domain name, similar to a well-known trademark owned by a third party, is sufficient to point out an unfair behaviour only aimed at infringing Trademark Laws since it is possible to activate the web site at any time.

COURT OF CREMA - 24th July 2000

The Company Biaccabi snc was sued by the Company Alnitec Srl because having registered and used the domain name ALNITEC.COM by setting a "redirection" to the defendant's web site BIACCABI.COM. On the first Court preliminary decision on a "redirection" case the Judge ruled that diverting Internet traffic from the Internet address ALNITEC.COM to the defendant's web site is an act of unfair competition and a trademark infringement. Therefore the use of the Complainant's tradename and trademark as the domain name ALNITEC.COM by the defendant has been prohibited including the "redirection" and the use of the e-mail addresses.

COURT OF SALERNO 5th July 2000

Beside the acknowledgement of similarity among “car / motorbike batteries” and “cell batteries” the Court also recognised that:

“… also in the case when the use of a renown trademark as a domain name or on a web-site does not refer to similar goods or services, such use amounts to a trademark infringement causing undue advantage for the exploitation of the notorious trademark and for its association to the activity of the owner of the renown trademark.”

The convenant was ordered:

the inhibition, the withdrawal from the market and the seizure of all goods bearing the counterfeited trademark;

the removal of the counterfeited trademark from his web-site;

the publication of the decision on a national newspaper and on his web-site.

COURT OF FIRENZE – 29th June 2000

With an interim decision (ex parte), requested by the Airline Belgium Company N.V. SABENA SA, the Court ordered the inhibition of use of the domain name “WWW.SABENA.IT” registered on January 26, 2000 by A&A of Mr. Sergio Castellani.

Following to the appearance of both parties, the Court completely reversed its first decision arguing that:

“The domain name is the Internet address of a computer linked to the net … rather than a distinctive sign” and it should be only considered from a strict technical point view;

“The 'domain name – trademark' is not an absolute right … and it is not regulated by our judicial system”;

“The Internet user knows about the possible non correspondence of the domain name with the trademark or the trade-name of the Company to be searched”; therefore “… there is no violation of the trademark, of the trade name and of any other distinctive signs …”.

With this decision SABENA should also refund A&A from the expenses of the suit.

COURT OF ROME

The interim request against the use of ROMAONLINE.IT for identical services by a competitor (also offering information on tourism, city-life and events in Rome) was rejected because “… the trademark is descriptive, it has no identifying function and it has no sufficient distinctive character…”.

COURT OF ROME - 22nd December 1999

With a preliminary judgement, the Court recognised trademark rights against an identical domain name registered by third parties.

Although the defendant's registered domain name is still not connected to an existing web, the simple registration as a domain name has been judged as unlawful and counterfeiting an earlier registered trademark. The simple registration as a domain name has been considered per sé as a limitation of the commercial activity of the owner of the registered trademark.

The owner of the registered domain name (the "cyber-squatter") has been ordered to cancel the ".com" domain name.

Both the plaintiff and the defendant are Italian companies with domicile in Italy. The decision is subject to Court confirmation on first instance.

COURT OF GENOA – Order of October 12th 1999

On the appeal against a previous interim order, the Court confirmed the previous decision to stop the use of the website www.altavista.it. affirming that the difference between “… the commercial field, the field of the real estate buying and selling” arguing that “the misleading of the users, by means of the exploitation of a name” …” is without any doubt a case of unfair competition (art. 2598,1 Civil Code).

COURT OF VERONA – Order of March 23rd 1999

The Court of Verona, pointing out that:

… the validity of a trademark should not be questioned by an earlier domain name's application;

the trademark (TECHNOVIDEO relating to home video's automatic vendors) does not seem to be in conflict with the provision of art 18 Trademark Law, since it is neither a generic denomination of the good nor does it indicate one of its distinctive elements, not even can it be considered as a weak trademark;

the trademark seems to be endowed with sufficient distinctive capacity;

by interim injunction the Judge has prohibited the use of TCHNOVIDEO both as a a domain name and as a trademark to distinguish goods relating to video-cassettes.

COURT OF ROME – Order of March 22nd 1999

When dealing with well-known trademarks, the provider engaged with the management of the website who ignores the paternity of a trademark is legally responsible since “by his behaviour he allowed the illegal act to be committed”.

COURT OF VICENZA - 6th July 1998

Use of a well known mark as a domain name or in an Internet website, also to distinguish goods and services not similar to those protected, is a violation of the owner's rights because it determines the immediate advantage to associate the latter activity to the one of the owner of the well known mark, its exploitation and the unjustified advantage deriving therefrom.

COURT OF VALDAGNO - 27th May 1998

As every company has the absolute right to turn up on the market and to the public through any means of communication using its own name and the trademarks it owns and considering that the Internet is a further means of communication among companies in addition to the conventional ones, each company must be entitled to use its trademark also as "domain name".

No risk of association among trademarks used on the Internet can be verified as the net entering system does not enable any duplication or identity of "web sites"

COURT OF NAPLES - 8th August 1997

The former agent of an industrial company is liable for unfair competition for confusion, misappropriation of privileges and inconsistency with the principles of professional fairness when, after the termination of the agency contract:

A) he uses two websites (one of which in the name of the former proposer) declaring himself as "general agent for Italy" in the field where the said proponent operates;

B) he uses the abbreviation of the rival company;

C) he reproduces the former proponent's list of customers, indicating it as its own;

D) he reproduces photographs taken from the catalogue of the rival company.

If there are the essential grounds, the non-entrepreneur third party, also involved in the unfair competition act caused by an entrepreneur against a competitor by advertising through his web site, is co-responsible according to art. 2043 (extra-contractual responsibility) of the civil code and not according to art. 2598 (unfair competition);

the owner of a web site on the Internet is subject to the obligations of the owner of a communication mean, as the Internet, as "international system of interrelationship between small and large telematics nets", is equivalent to a press media; the owner of an Internet domain name is responsible for any unlawful acts integrated by the contents of the pages introduced his web site;

he is obliged to carefully check who is the owner of the distinctive mark used by the advertiser and to preventively control the content of the advertisement, so as to ascertain that it is clear, true and correct.

This principle also applies when the owner of a domain name only deals with the technical maintenance of the site, whilst the management, commercial negotiation of the pages to be introduced on the Internet is assigned to a third party.

COURT OF ROME - 2nd august 1997

The use of a domain name on the Internet reproducing the name of a company can determine confusion which is not excluded from the registration of the domain name by the Naming Authority.

COURT OF CUNEO - 23rd June 1997

The introduction of information (reports, pictures, videos, data, programmes, etc.) on the Internet is to be considered as a form of publishing in accordance with 12 TM law.

The free access to the Internet does not exclude that the product of the intellect is used on the net for commercial purposes.

The service provider is not responsible for the violation of copyright through a web page hosted by its server if the service provided has only granted the access to the net.

A table containing the market-rate and foreign currency data is sufficiently original as to be qualified as product of the intellect.

The similarity of the overall graphic look, headings, title, pictures and software's HTML codes used by two tables suggests that the second table copies the first one, with resulting violation of arts. 100 and 102 copyright law (as for the external look and title of the work) and arts. 1 ult. Co. And 2 No. 8 copyright law (as for software).

COURT OF MILAN - 9th June 1997

Use of a domain name reproducing a trademark registered by another company and used by the latter as a domain name for providing commercial services on the net, besides being a further element of trademark infringement, is an unfair competition act and is therefore unlawful being capable of causing confusion among customers.

COURT OF CUNEO - 24th February 1997

There is the prima facie right related to the violation of copyright to a web page software when the petitioner's and opponent's web pages are clearly similar with respect to their external aspects (shape, heading, sub-heading), data and HTML source.

The probative seizure must only concern the material regarding the web page which is believed to violate the copyright, not the whole server hosting it.

This precautionary measure related to a web page, namely, a seizure in order to prove the violation of a copyright, must be granted without the other party's permission.

COURT OF GENOVA - 23rd January 1997

When a company advertises a commercial message through Internet illegally using someone else's trademark without asking for its owner's consent, the designated judge can forbid the trademark in question to be further used in accordance with art. 63 TM law, and order the publication of the decision on dailies as well as on the opponent's web site for a certain period of time by the petitioner and at the opponent's costs.

Because of the widespread of Internet, publishing an advertisement via Internet violating the trademark protection rules must be considered a sufficient ground for forbidding the use according to art. 63 TM law. The order forbidding the use of a trademark can also be published on a web site.

COURT OF PESCARA - 9th January 1997

Using a trademark registered by third parties for supplying services on a web site is not an unfair competition act if such a trademark is not original and distinctive and when there is no confusing similarity between the activities carried out by the owner and by the third party.

COURT OF MODENA - Order of 23rd October 1996

The moderator of a web site freely available to the category of lawyers and attorneys for the debate on specific problems concerning the practice of law cannot be qualified as entrepreneur and is therefore not responsible for unfair competition acts against a publisher for using a domain name which is confusingly similar to the heading of a magazine of the publisher's.

The use of the "foro.it" mark as domain name on a website is an unlawful act according to art. 2043 civil cod, for violating art. 100 copyright law and the right to the publisher's personal identity.

4) Work in progress.

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