Can one lose the internet domain to the benefit of who has the same trademark registered?
Anything revolving around Internet is, from a legal point of view, difficult to precisely define, as it is a new field and not controlled by specific regulations, and the regulations are applied, by necessity, for very different situations. The conflicts between owners of Internet domains (i.e. “pippo.it” or “pippo.com”) and the owners of registered trademarks are quite frequent, and so there is an orientation to favour who has a trademark against the owner of a domain.
In practice, when we ask to register a domain, this gets assigned only in the case when there isn’t an identical one already registered, but the Registry does not take care of finding out whether there is a trademark alike it, in fact a document is asked to be signed stating that you commit yourself to give it up should the owner of a trademark make some claims on it. From the sentences existing in this sector we can find that the only case where an Internet domain can be lost is when there is already a prior identical trademark registered by others.
It is not said that whoever has the domain is wrong as, in order to establish if the claims are founded, you need to evaluate if the products or services shown on the site are the same or easily confused with those of the registered mark. For instance, if both produce shoes, there are few possibilities of not losing the domain, but if one produces shoes and the other one publishes books, then there are more possibilities of keeping the domain.