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Domain protection and recovery

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Welcome in the “Domain protection and recovery” section

If you want to defend your idea from forgery, you’ll need to choose the best protection with the help of an expert.

Avv. Chiara Morbidi

Chiara Morbidi, Esq.

Head of the Legal Department

Below are listed the main topics on this field to help you.

  1. Domain protection and analysis
  2. Recovery of domains entitled to thirds (.it, .com, .net, .eu, or others)
  3. Arbitration and mediation for domain recovery
  4. Litigation fordomain recovery
  5. Special procedure to suspend a website (urs)
1

Domain protection and analysis

Our attorneys have been working for more than ten years in domain protection and analysis alongside one of the most renown operators in the field in terms of numbers of registered and manageddomain.

Our starting point is the collaboration and the attention to clients. First of all, we want to know our clients, analyze their organization and listen to their needs.

This phase is really important to us and we deal with it very carefully asking specific question to the client and doing comparative analysis of the main competitors in order to establish, with the client, the goal to reach.

The analysis of the registered trademarks and of the current domain portfolio, which may need to be enriched with new registrations, is very importantin order to have a well-grounded base from where to start for the online protection of the trademark using the right means of protection and prevention.

Once the goal is set, we create an intervention plan which could be either innovative (new services, registration of new trademarks or domains) and/or conservative.

After this step, we proceed according to the plan agreed with the client.

For each client we create a different plan in accordance with his/her needs. The planning is generally composed by these steps:

a)  Examination of the trademarks and their possible strengthening  

The brand protection starting point is the examination of the client’s trademarks.

We exam the status of the registrations, the correctness of the classes, the Countries where they are in forceand we decide the possible strengthening actions which could be new registration and/or the reorganization of the trademark portfolio choosing to abandon some signs and replace them with new ones.

This phase is really important also to the declaration of use of the signs to avoid their decadence.

Our experts may manage all your trademark portfolio taking care of their status, their renewals, their opposition and their prosecution giving the client a periodic updated reporton the status of the trademarks.

b)  Surveillanceservices on trademarks

It is possible to activate surveillance services on trademarks according to the needs of the client to become aware in advance if a third party is trying to register a trademark alike.

c)  Online surveillanceservices

It is possible to activate online surveillance services on social media or on apps.

We use means aimed at tracing trademarks and domains registrations and the refused ones, in order to have a complete view of the online status of the brand.

d)  Exam of the status of domain registration – Domain Audit

The Audit Domain service analyzes the current and the missing domain registrations in relation to a specific brand taking into account the (geographic, generic and new) extensions available on the market.

We start with the analysis of the registration and expiration day and we collect information on the owner and manager of the domain (if these pieces of information are available on the Whois database).

e)  Registration of new domains – Domain Name Management

We assist you in every step of the domain registration, from the collection and input of the data required to the sending of the documentation in support of the correct ending of the registration. The service is entirely handled by a dedicated account manager who will take care of any bureaucratic aspect for the client. Entrusting the complete management of a domain to a qualified operator allows the client to prevent future problems due to the missing registration of an extension and also reveals in advance issues due to the possible difficulty to recover a domain registered by others.

f)  Recovery of domain names registered by others

Finally, we recover domains entitled to other people.

The process to recover domain registered by others differs according to the case.

2

Recovery of domains entitled to thirds

Each case of domain recovery is different from the other and need a preliminary study.

The study of the case involves the exam of the situation, including online search aimed at finding information on the owner of the domain name, on any other possible domain name s/he owns, on previous uses of the domain and other analysis.

It also involves the exam of the trademarks which could be used to act against the owner and all the possible solutions on the grounds of the owner’s nationality and of the .tld of the domain to recover.

In light of this analysis, we indicate the client whether or not to proceed with a cease and desist or with a re-assignment procedure, a legal action or if it is better to try to recover it by buying it.

The recover by purchase is on the one hand the attempt of a dedicated account manager to acquire a domain from the current owner at the lower cost, guaranteeing the total anonymity of the purchaser.

This type of recovery needs a preliminary evaluation of an expert who analyzes the status of the domain to recover and gives an evaluation of the potential criticality in case the domain is not recover and an indication of the price to propose in order to start the negotiation. The service requires a contact with the owner, the negotiation and the eventual passage of the domain to the interested subject.

In case the client is not interested in purchasing the domain, it is possible to send cease and desist letters to the owner of the domain name and/or to the provider aimed at obtaining the assignment amicably.

 A cease-and-desist can be immediately successful or be the start of a negotiation with the owner of the domain. Its aim the assignment of the domain upon payment.

If the “good” domain recover is not possible, it is possible to pass to the real action of recover.

If the requirementsprovided by the regulation are met and in compliance with the law of the country, the Uniform Domain Name Dispute Resolution Policy (UDRP) starts.

We take care of all procedures for the generic .tld (.com, .net, …), of the new extension and of many geographic domains such as those for .tld “.it” and “eu”.

We entrust our foreign colleagues with the management of the procedures in those countries which require a specific local procedure and/or a resolution by conciliation or mediation.

The administrative recover procedures are very effective and allow to recover quickly a domain that was registered illicitly by someone else.

Avv. Chiara Morbidi

Do you want to defend your invention?

Ask for a free Check-up to have:

  • The analysis of your creation
  • The indication of the most effective protection
  • The estimate of costs

Or call 055 0981652

3

Arbitration and mediation for domain recovery

In some countries the procedures of domain recover lead to an arbitration or a mediation to attempt anout-of-Courtrecover.

In case of an arbitration, one or more arbitrators are appointed to issue a decision after having listen to the parties.

In case of a mediation, an expert is charged to help the parties in reaching an agreement in relation to the domain.

Both situations need the assistance of an expert since the procedure are rather complex and may have further consequences.

4

Litigation for domain recovery

When the administrative recover procedure is not possible or convenient, we take legal action to recover the domain names.

When the administrative recover procedure is not possible or convenient, we take legal action to recover the domain names.

Legal actions are reliable and sometimes suggested for complex situations and when the violation of the rights of the person is added to the violation of the domain name.

During a litigation it is possible to ask for the suspension of the web site or, differently from an administrative proceeding, for an economic penalty in case the order of the Judge is not fulfilled.

Our attorneys have attended many proceeding of domain name recovery obtaining great results.

5

Special procedure to suspend a website (urs)

The acronym URS stands for Uniform Rapid Suspension (System).

This procedure has the aim of protecting the owners of trademarks who can, under precise conditions, obtain the suspension of the domain name violating their right.

The current procedure concerns only the contestations related to the new domains and the few geographic domains which chose to adopt the URS.

The requirements are similar to those of the UDRP but stricter.

In this case the trademark of the claimant has to be registered and also used and there has to be an evident violation of the right of the trademark which requires an “elevated standard of proof”.

If the trademark is used on a website to sell counterfeited or different products, to attract clients, to sell without the authorization or for similar purposes the situation can be easily handled.

Instead, if the domain is linked to a pay-per-click parking website the situation is more complex. Anyway there may be valid arguments  to consider this behavior as an illicit use of the trademark if the trademark is not a generic name and the pay-per-click link redirects to competitors.

The mostdifficultcasesconcern non activewebsites.

In this case, the request for the suspension of the website (that is what is usually obtained with the URSs) is “precautionary” because if the website is not available, it has been already suspended and there may not be found any current use in bad faith.

URS’s timings are very quick.

On the other hand with an URS the domain name will never be assigned, it will be entitled to its owner even if s/he would never have an enable website for the rest of its registration.

These special procedures cannot be used for any kind of domain name.

Nevertheless, it is always possible to suspend the visibility of a website recurring to a Court with a fast and efficacious action thanks to the specific procedures introduced by the IP Code.

Do you want to protect your invention?

Ask for a Free evaluation to have:

  • The analysis of your creation
  • The indication of the most effective protection
  • The estimate of costs

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