Published article on World Trademark Review (n.25 June/July 2010)
A number of issues are raised by the registration of ‘.it’ domain names, but these need to be overcome as ownership of domain names is crucial to obtain IP rights that can be defended against third parties
In the internet era many signs, including domain names, enjoy distinctive character, and thus are used to attract consumers and to identify the source of goods. In the past, when ruling on domain names the Italian courts treated such signs as simple addresses for the Internet. In other words, the main function of domain names was to be not signs with their own distinctive character, but a way for consumers to reach a particular webpage or find a particular business or different sources of goods or services. This tendency has been overruled by more recent decisions and legislation.
In this context, it is crucial to identify the Italian rule of law and the authorities whose duty it is to issue enforceable decisions on domain name conflicts.
Domain name dispute resolution
The Italian Naming Authority (INA) is responsible for ‘.it’ domain names. According to the INA website (www.nic.it), the ‘.it’ domain name register is the ninth biggest register in the world, with an average of 35,000 new domain name registrations being sought and obtained each month.
The first issue for domain registrants to deal with is the potential opposition to ‘.it’ domain names that third parties might file against their registrations. The Italian courts are often entrusted with cases of conflicts between domain names and trademarks. However, many decisions are issued by the Arbitration Chamber, the INA’s internal authority which rules on such issues, as this process is faster and cheaper for the parties. Before commencing any action either before the Arbitration Chamber or in court, the petitioner may file an administrative opposition of a ‘.it’ domain name – the socalled reassignment proceeding. Upon investigating the alleged infringer’s bad faith in using and registering the ‘.it’ domain name, the INA Reassignment Proceeding Board decides whether to assign the name at issue from the infringer to the legitimate owner by law.
Although the board’s decision does not bar any further actions in court or arbitration, the reassignment proceeding may not be commenced if such judicial action has already begun.
Domain names challenging later trademarks
Pursuant to Article 12 of the IP Code, the following designations lack novelty:
• those which are identical or confusingly similar to earlier signs;
• those which are already known as trademarks; or
• other distinctive signs (as used or to be used in connection with a particular type of goods or service).
Before 2005, confirmed case law on conflicts between designations, trademarks and domain names held that earlier domain names are distinctive signs that bar subsequent use and registration of the relevant designation. By the same rule, such decisions have found that the rule of law applying to conflicts involving domain names is the Trademark Law.
These decisions were taken into account when the Code of Industrial Property (February 10 2005) was enacted.
In fact, pursuant to Article 22 of the code, earlier domain names prejudice subsequent trademarks that are confusingly similar to the domain names.
Moreover, Articles 2563 to 2574 of the Civil Code, which deal with company names and signs and particular typical or atypical signs to identify business sources, apply to domain names.
Domains challenged by earlier marks
Article 16.6 of the Naming Authority Rules provides that the following pre-conditions apply to the reassignment of a challenged domain name from the alleged infringer to the legal owner:
• The challenged domain name must be identical or confusingly similar to a trademark or other distinctive sign over which the petitioner may claim rights (as well as the petitioner’s name, surname or company name);
• The alleged infringer must not legitimately claim rights or title over the domain name at issue; and
• The alleged infringer must have shown bad faith in using or registering the domain name at issue.
Domain name rulings
Three types of authority rule on domain name conflicts:
• the INA Reassignment Proceeding Board (to challenge a domain name based on an earlier trademark);
• the INA Arbitration Chamber (also to challenge a domain name based on an earlier trademark); and
• the Italian courts (to challenge a mark based on an earlier domain name).
The first step against a potential domain name infringer is to commence opposition proceedings before the INA, in particular before the Reassignment Proceeding Board. This must be done before any other action is commenced (either in court or in the Arbitration Chamber). The main focus of such a board investigation is the bad faith of the alleged infringer. First, the board rules on the threshold requirements (ie, standing and basis) on which the domain name should be reassigned to the holder by law.
It is frequently and widely held that ownership of an earlier trademark registration is grounds to challenge a ‘.it’ domain name. In ANSA, Agenzia Nazionale Stampa Associata v PROLAT (Case 158/2006) ANSA challenged the registration of the domain names ‘aansa.it’, ‘annsa.it’, ‘anssa.it’ and ‘ansaa.it’ and requested that the board assign these domain names back to ANSA. In addition to the similarity between the domain names at issue and the earlier trademark registrations for the word ANSA owned by ANSA, and PROLAT’s lack of rights in the word ‘ANSA’, the petitioner also cited PROLAT’s bad faith in requesting the registration of such domain names.
Adding letters to the word ‘ANSA’ in domain names was a form of typo-squatting, with the aim of sending ANSA’s consumers (people who are looking for news) to other websites by exploiting a typographical error.
In addition, due to ANSA’s established reputation, PROLAT’s registrations implied that it intended to take advantage of ANSA’s popularity and reputation.
The board fully accepted ANSA’s arguments and held that the domain names at issue should be reassigned to ANSA in accordance with Articles 16(a), (b) and (c) of the Naming Authority Rules.
The Arbitration Chamber’s opinion is consistent with the board’s decisions. For example, in Coca-Cola Italia Srl v Sarda Fonti SpA (Case MFSD 4/2007) the Arbitration Chamber ruled to reassign the domain name ‘cocacola.it’ to the petitioner Coca- Cola Italia Srl. In addition, on September 21 2007 the Arbitration Chamber reached the same finding in Coca-Cola Italia Srl v Garau Srl over control and registration of the domain name ‘sprite.it’.
The preliminary issue that arises when courts are ruling on conflicts between domain names and trademarks is verification of the domain name’s identity.
The court must decide whether the domain name is a distinctive sign or merely an address with the function of finding a website, rather than identifying a source.
The majority of the Italian courts have held domain names to be distinctive signs.
In accordance with this view, on July 27 2000 the Court of Modena held that:
domain names are not mere electronic addresses or mail boxes. In fact, if used in connection with business activities, they must function as an identifier of the business which they are linked to.
Similarly, the Court of Siracusa on March 23 2001 held that:
it is undisputed that using a prior trademark as domain name is a violation of the trademark owner’s rights since it causes an unfair advantage due to the webpage’s connection with the trademark holder’s business, exploiting the notoriety of the same sign.
Adding new elements, in a decision of October 11 2000 the Court of Brescia found that the holder of an earlier trademark may enjoin third parties’ use and registration of a domain name that is identical or confusingly similar to such a mark, even if there is no intention on the part of the mark holder to use the domain name at issue.
One of the best-known cases of a mark holder challenging a later domain name registration is the Armani case, on which the Court of Bergamo ruled in 2003. Luca Armani, a producer of office stamps, sought and obtained registration of ‘armani.it’ to promote his business. A year later, on October 22 1998, Giorgio Armani SpA commenced an action in the Court of Bergamo, challenging the registration of the domain name and requesting that it be reassigned to it, as well as requesting a declaratory judgment on the grounds of unfair competition.
Despite the defendant’s rights and control over his last name, pursuant to the rule of law applying to trademarks with reputation, the Court of Bergamo ordered Luca Armani to cease using the domain name ‘armani.it’ and reassigned the domain name to Giorgio Armani SpA. The court held that there was no direct or indirect competition between the parties (and therefore no unfair competition). However, consumers and fashion buyers had been sent to the office stamps website by typing ‘Armani’ into a search engine. In addition, the court held that the defendant’s ownership of ‘armani.it’ caused prejudice to the plaintiff because it prevented the plaintiff, the owner of the prior trademark ARMANI, from registering a domain name consistent with its prior rights. Regarding the issue of bad faith, the court found that registering ‘armani.it’ rather than ‘lucaarmani.it’ might be considered to be presumptive evidence of bad faith due to the lack of attempts to make consumers aware of the different business sources.
The main issues raised by the registration of ‘.it’ domain name are set out above. However, despite the potential problems, ownership of ‘.it’ domain names, which provides full rights over a distinctive sign, is crucial to obtain IP rights that can be defended against third parties.