The domain names
The domain name is really the unique name that identifies an Internet site. Considering the intricate diffusion of Internet and mainly the potential of the web at an economic and commercial level, it has become particularly advantageous to register the Internet domains and also convenient to protect them by registering the corresponding trademark.
[The trademark prevails on the domain]
Who has a registered trademark can prevail over who utilizes it just as an Internet domain.
The ownership of a registered mark has considerable chances of achievement in an ordinary sentence of infringement in the case of a possible conflict with a domain name, identical or similar, registered at a later stage.
The same applies in a reassignment procedure.
[The procedure of reassignment]
This is an alternative mean of resolution of any controversies, introduced in Italy on the 28th July 2000, name; the main object of this procedure is to verify the right of use or the availability of the domain and the research over the possible bad faith of the registering person, therefore the holder of the mark can get the transferral in his own favour of the domain.
The procedures of re-assignment are particularly convenient as they allow the right to the title of the domain illegitimately registered by third parties, in a very short time, but they are only possible where three fundamental requisites are fulfilled:
1) identity or similarity such as to create confusion between the domain name and the owner’s registered mark;
2) no right or title over the domain held by the current holder;
3) bad faith in the registration or in the domain use.
If the registered mark’s owner can demonstrate the existence of the requisites as per points n. 1) and 3) and the current holder cannot demonstrate the existence of the requisite as per point n. 2), the selected Board of the Wise ones will provide for the transferral of the contested domain in favour of the mark’s owner. Should one of these requisites be missing there will be no reassignment.
[The domain name in the Industrial Property Code]
The law by now considers the domain name a distinctive mark almost in the same way as a firm, as the sign and as the trademark. This has been recognized by the coming into force of the new Property Industrial Code (D. Lgs. 30/2005), which allows protecting the domain name against acts of infringement and of usurpation of existing places by third parties, through the lodging of an ordinary appeal of cautionary protection. Particularly the art. 133 I.P.C. enables the legal authority to arrange, over and above the restraint of the illegitimate use of the registered domain, also its provisional transferral, upon payment of an appropriate deposit by the beneficiary of this precaution.