Italian Dis Res Related to Domain Names

12 May 2004

Gabriella Gemignani

The existing Italian Authorities

In order to comply with the international domain name regulation system, in 1999 the Italian legislator established two Authorities to manage the internet domain, the Italian Naming Authority (NA) and the Italian Registration Authority (RA).

In order to establish responsibilities, the NA issued the Italian Domain Name Regulation and passed responsibility for the assignation and registration of the “.it” country code Top Level Domain names (ccTLD) to the RA. Furthermore, the RA, furthermore, holds and manages the National Registry and the primary Name server for the Top Level Domain ".it".

The Italian regulation

The Italian Domain Name Regulation provided by the NA provides internet providers or maintainers of domain names with two alternative dispute resolution (ADR) procedures in respect of the ordinary jurisdictional procedure. Internet providers of domain names may benefit from ADRs when the domain names involved in the dispute are registered in the country code ".it". The Italian system provides an Arbitration and a Re-assignment Procedure.

Introducing the claim

In both the abovementioned procedures the dispute is introduced by the party complaining (the Complainant Party) to have been damaged by the illegitimate assignation of a domain name to the owner (the Respondent Party), by registered mail and should contain, inter alia, the specification of the claim and be addressed to the RA..

Within 10 working days the RA will send an e-mail to the Respondent Party of the challenged domain name setting out all the circumstances of the claim.

At the same time, both parties are invited to start the Arbitration Procedure (art. 15 of the Italian Domain Name Regulation) or, alternatively, the Re-assignment Procedure (art. 16 of the Italian Domain Name Regulation).

While the claim is pending, the Complainant Party has to confirm, every 6 months, that it will continue with the procedure. If such confirmation is not given, the claim will be considered settled by the RA.

Moreover, the acceptance of the claim does not automatically assign the challenged domain name to the Complainant Party. The Complainant Party has 10 working days to file the request for the assignation of the domain name.

Finally, the procedures described above and below do not limit the possibility for the Complainant Party to sue the Respondent Party, before the Jurisdictional Court, even after the end of both the Arbitration and the Re-assignation Procedures.

The Arbitration Procedure

Whoever asks for the registration of a domain name may undertake, at the time of registration or by means of a subsequent act, to assign to arbitration the claims that may arise in connection to the domain name.

The Arbitration Panel is composed of three members: each party selects one member and the Chairman is appointed by the two members so appointed. All the members of the Panel are members of the NA.

Where there is risk of serious damage, and on request of one of the parties, the Panel may adopt pprecautionary measures in order to prevent damages that may arise from the delays in the procedure.

As far as the duration of the Arbitration Procedure is concerned, the Italian Naming Rules state that the members of the Panel have to issue their decision within 90 days from the constitution of the procedure.

The parties have no right to appeal the decision of the Panel.

A favourable feature of this procedure is that decisions are executed within only days. This encourages parties to use it.

The Re-assignment Procedure

The Re-assignment Procedure is only applicable to “.it” country code domain names and since it has no jurisdictional nature, does not prevent the parties from appealing, even at a later time, to the Court or to the Arbitration Procedure.

Such procedure is governed not only by the Italian Domain Name Regulation, but also by the rules contained in the "Domain Name Re-assignment Procedure" (which are part of the Italian Naming Rules) and by supplementary provisions set out by the so called "Execution Bodies" who are in charge of the Re-assignment Procedure.

The Re-assignment Procedure may only be filed in order to verify the existence of a lawful title for use and/or the licit availability of the domain name by the registrant to verify that the domain name has not been registered and is not maintained in bad faith.

The procedure is managed by the Execution Body that. The Execution Body must fulfil the requisites set forth by the NA, e.g., significant experience in IT law.

In any case, a Re-assignment may not be filed in the event that a jurisdictional procedure or an Arbitration is pending with respect to the same challenged domain name.

Recent matters

The following procedures are frequently used to deal with “cybersquatting” and “pornosquatting”.

Cybersquatting concerns registering, selling or using a domain name with the intent of profiting from the goodwill of someone else's trade mark. It generally refers to the practice of buying up domain names that use the trade marks of existing businesses with the intent to sell such domain names for a profit. According to Art. 10 of the Italian Naming Rules this behaviour is expressly forbidden.

On the other hand, pornosquatting concerns the registration of a domain name identical or significantly similar to a trade mark with the purpose of selling it not to the owners of the trade mark (as with cybersquatting) who may want to use it for their own website, but to the owners of a porn website with the intent of deceiving Internet surfers towards the porn website.

In both cases, the owner of the trade mark suffers direct and indirect damages: in particular, and in addition to, all the costs related to the possible dispute resolution procedure. In the case of “cybersquatting”, the legitimate owner of the trade mark may suffer economic damage that arises from being “obliged to buy” a domain name that, under normal conditions, would easily be assigned to it. In the case of “pornosquatting”, the legitimate owner of the trade mark may also suffer damage to its image.

Although it relates to the protection of a “.com” domain name, a successful case concerning pornosquatting is Egidio Galbani S.p.A. v. Saputo. In this case, Bird & Bird acted for the Complainant Party, Egidio Galbani S.p.A. (Italy) against Ms. Jenny Saputo (Canada), the Respondent Party, in a dispute with the WIPO’s (World Intellectual Property Organisation) Arbitration and Mediation Centre.

The dispute concerned the registration of the domain name “” registered by Ms. Saputo.

As soon as the Complainant Party - owner of the Community trade marks VALLELATA and MOZZARELLA VALLELATA and of the “” domain name – discovered that the Respondent Party had registered the domain name “” it decided to file a claim against Ms. Saputo.

The Complainant Party based its complaints on the fact that the domain name “” was used by the Respondent Party to automatically re-direct Internet users to various pornographic websites, such as “”, “” and “”, with several links to further pay-per-download pornographic sites. By clicking on the first webpage to appear after typing the contested domain name, users were automatically directed to several further pornographic websites and were asked to provide credit card numbers to access the pornographic material contained.

In addition, users who tried to close these pornographic websites were also “mouse-trapped” into visiting several further (pornographic) websites. When users attempted to leave the Respondent's site, numerous additional windows were generated, each displaying banner advertisements or pornographic sites offering paid services. Attempting to leave the site triggers the Internet browser to generate additional windows. There was no doubt that the Respondent Party used the contested domain name for commercial purposes.

The domain name was identical and/or confusingly similar to the trade marks owned by the Complainant Party and the suffix “.com” was evidently not sufficient to avoid confusion.

Moreover, the Respondent Party had no rights or legitimate interests in respect of the domain name “” and the express association by the Respondent Party of the term “mozzarella” with the term “vallelata” shows that the Respondent Party knew the Complainant’s trade marks and products.

WIPO’s Panel ordered the immediate transfer of the domain name from the Respondent Party to the Complainant Parties.

Important - The information in this article is provided subject to the disclaimer. The law may have changed since first publication and the reader is cautioned accordingly.