Le interessanti problematiche di natura legale, commerciale ed
industriale concernenti scelta ed utilizzo dei nomi a dominio
4 luglio 2017
Alternative dispute resolution proceedings involving ".it"
domain names in 2016
There are now over 3 million ‘.it’ domain names, making it more vital than
ever that disputes be resolved swiftly and cost effectively. A review of
cases decided last year provides a snapshot of case law in this area.
Last year 32 cases involving domain names in the country-code top-level
domain (ccTLD) ‘.it’ were decided through alternative dispute resolution
(ADR) proceedings – almost the same number of decisions issued in 2015.
There are currently five dispute resolution service providers in Italy,
among which the Milan Chamber of Arbitration is the most productive.
In most of the 2016 decisions (21), the panels upheld the complaint and
ordered the transfer of the contested domain name to the complainant; the
complaint was rejected in only five decisions.
The procedure for reassigning a domain name in the ‘.it’ ccTLD is based on
the Internet Corporation for Assigned Names and Numbers’ Uniform Domain
Name Dispute Resolution Policy (UDRP), which is why panels often refer to
World Intellectual Property Organisation (WIPO) jurisprudence in their
decisions. Unlike the UDRP, the Italian procedure provides for an initial
mandatory stage which involves the filing of a challenge (opposition) which
– if successful – results in the contested domain being suspended so that
it cannot be transferred to a third party. This is designed to give the
parties time to settle the dispute.
Split holdings over AS Roma domains
The decision in a case involving the domain name ‘as.roma.it’ addressed the
registration of a third-level domain for the first time in Italian case
law. The panel refused to transfer the domain name, considering that it was
not identical or confusingly similar to the trademark AS ROMA owned by the
complainant, AS Roma SpA, which manages the famous Italian football team.
The appointed single panellist stated that the assessment of confusing
similarity should be conducted with regard to the registrable part of the
domain name (ie, the third-level domain ‘as’), and should disregard the
second-level domain ‘roma’, which was managed by the ‘.it’ registry and was
not registrable. As a result, the comparison was made not between ‘as.
roma.it’ and ‘a.s.roma’, but rather between ‘as’ and ‘a.s.roma’. Since ‘as’
– which stands for associazione sportiva (sports association) – was
insufficiently distinctive, the panel concluded that there was no confusing
similarity between the disputed signs.
Since the standing requirement under the first element was not satisfied,
the decision thus went against the complainant.
This was despite the fact that the disputed domain name was registered with
the clear intention of attracting internet users for commercial purposes by
taking advantage of the well-known mark AS ROMA. In fact, the website to
which the contested domain was directed contained news and information
about the famous football team and displayed pay-per-click links.
According to the panel, a favourable decision would have granted the
complainant an unacceptable monopoly, which would have affected every
secondlevel domain name under ‘roma.it’ composed of two or three letters
and containing the letters ‘a’ or ‘s’.
The panel’s view in this case appears extremely strict, since it was not
disputed that the trademark AS ROMA was clearly recognisable as such within
the domain name as a whole.
However, in a case involving the domain name ‘asromaradio.it’, the same
complainant succeeded in obtaining the transfer of the domain name. This
had been registered by an individual and used for a web radio station
devoted to the famous football team. These circumstances were sufficient to
prove that the domain name had been registered in order to exploit the
notoriety of the trademark AS ROMA.
Exceeding its remit?
A case involving the domain name ‘accademiacignaroli.it’ ended in its
transfer – although it was anything but straightforward. The parties were
two cultural institutions of Verona, an academy (complainant) and a
foundation (respondent). The disputed domain name was registered in 2012 by
the complainant and a change of ownership occurred in 2013 in favour of the
respondent upon the request of an individual who at that time was the legal
representative of both the academy and the foundation. Following an
examination of the documents and materials submitted by the parties, the
single panellist concluded that there was no valid title for the domain
name transfer, meaning that the change in registrant data had been
requested illegitimately. This was interpreted as evidence of bad faith.
Another circumstance indicating the registrant’s bad faith was the fact
that the domain name had been used merely to redirect users to the
respondent’s official website.
While the outcome appears reasonable and logical, in fact it far exceeded
the limits of an ADR procedure because it involved a decision on
controversial facts which should have decided by a judicial authority.
The UDRP – as set out in 1999 and applied by WIPO’s panels – should be used
in clearcut cases only, where the three elements requested for the transfer
can be easily proved by the facts, evidence, clues and documents filed by
the parties. In this case, with regard to the change of ownership of the
domain, it was unclear whether the domain name was also included among the
assets subject to assignment from the academy to the foundation (a document
entitled “A Sworn Report of Evaluation of the Asset Value of the Goodwill”
ambiguously mentioned the provider of the domain name, which might have
suggested that the parties were actually willing to transfer it).
Can licensees or resellers use marks in domain names?
Two cases which addressed whether an authorised sales or service agent of
trademarked goods can use a trademark in its domain name resulted in
opposing decisions.
In a decision involving ‘bicgraphic.it’, the domain name had been
registered by an authorised BIC graphic dealer and linked to a website
offering original goods carrying the BIC mark manufactured by the
complainant, Bic Graphic Europe. The panel ascertained the existence of a
right or legitimate interest in the domain name in favour of the
respondent, on the grounds that a reseller or official distributor of goods
or services distinguished by a trademark can use a domain name
corresponding to that mark, provided that all of the requirements set out
in the famous decision Oki Data Americas, Inc v ASD, Inc (WIPO Case
D2001-0903) are met. The panel held that in this instance all conditions
had been met – in particular, the following:
• The respondent was actually offering goods identified by the
complainant’s BIC mark;
• The respondent used the site to sell the trademarked goods only;
• The site accurately disclosed the registrant’s relationship with the
trademark owner (the wording “official dealer BIC graphic” appeared several
times) and did not falsely suggest that the website was the rights holder’s
official site; and
• There was no proof that the respondent had tried to corner the market in
all domain names containing the BIC mark, thereby blocking the rights
holder from sing its own mark in a domain name.
However, the UDRP panel in a case concerning the domain name
‘orazioluciano.it’ reached a different conclusion. In this case the website
to which the contested domain name was directed offered for sale not only
clothing articles bearing the mark ORAZIO LUCIANO (the complainant’s
trademark), but also other branded goods.
This fact was interpreted as evidence of bad faith, since it created a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation or endorsement of the website and the goods
promoted and offered for sale on it.
Tolerating use
In a case conducted by the Chamber of Arbitration of Milan and decided on
July 26 2016 (where the domain name and the parties were not disclosed upon
the defendant’s request), the complainant had tolerated the use of the
contested domain name for 10 years. However, the panel stated that this
acquiescence was irrelevant, as the principle of defending one’s rights
applies to trademarks only – where it is undisputed in Italian doctrine and
case law – and not to domain names.
Reverse domain name hijacking
In its decision on the domain name ‘groove.it’ the panel declared that this
was an instance of reverse domain name hijacking, since the complaint had
been brought in bad faith and thus constituted an abuse of the UDRP. The
disputed domain name (which corresponded to a common English phrase) had
been used legitimately by the respondent with no intent to violate the
complainant’s rights. The complaint was filed after the negotiations for
the purchase of the domain name failed, which was considered proof of
reverse domain name hijacking.
UDRP abuse?
Also unfounded was a complaint filed by a Dutch company aimed at obtaining
the transfer of the domain name ‘pay.it’, which was highly attractive to
the complainant as it is involved in payment services. In this case none of
the three conditions was satisfied.
The complainant failed to prove that it owned previous trademark rights,
that the domain was registered and maintained in bad faith and that the
respondent lacked rights or legitimate interests in the disputed domain
name. While the complainant’s websites were directed to the Dutch and
Benelux public, the contested domain name directed users to a web page
showing pay-per-click links genuinely related to the generic meaning of the
domain name. This was considered by the panel to constitute fair use of the
domain name for commercial purposes without intent to misleadingly divert
consumers. Even if unfounded, the complaint was not considered an abuse of
the UDRP.
Comment
There are now over 3 million domain names in the ccTLD ‘.it’, meaning that
the ccTLD ranks sixth among those of EU member states and ninth in the
world. Given this, the fact that a mere 32 disputes were resolved in 2016
might suggest that the level of infringement of prior rights is low.
However, it is more likely a reflection of rights holders’ failure to
address violations because they are unaware of how crucial it is to protect
their rights online.
April/May 2017
Paolo Di Mella
Bugnion S.p.A.
This article first appeared in World Trademark Review magazine issue 66,
published by The IP Media Group. To view the issue in full, please go to
www.worldtrademarkreview.com
|