Following Part I of this article.
The case for well-known trade marks and their grabbing
The Court of Milan adopts a pathbreaking approach: bad faith registration of a trade mark (sect. 22.2 Trade Mark Law) as applied to domain names
A few practical open questions: a) jurisdiction of the Italian judge; b) the role of the Registration Authority face a jurisdictional procedure
The case for well-known trade marks and their grabbing
When the commercial potential of the internet started to become of quite common knowledge the trade mark vs domain names dispute took the following typical format: unknown registrants gradually occupied the net with intensive registrations of domain names identical to well-known trade marks; the paramount value of the targeted sign for its legitimate owner put the so-called grabbers in the position to offer the resale of such names at iniquitous conditions, revealing a mere lucrative intent. Speculation was fostered by the fact that no trade mark owner in the real world could understimate the marketing potential of placing his undertaking in the virtul shop-window under the same bulk of identifying signs used and advertised trouhgout the traditional commercial channels. The larger part of this conducts featured on the side of the grabber a malicious and/or bad faith intent and practice has shown how long they have hegemonised the entire area of the trade mark vs domain names dispute.
I also reckon that the later acknowledgment that the encounter between trade marks and the internet can often germinate round the clock questions of distinctive signs interference, sometimes unrelated with the exploitation of a well known trade mark, must eventually be understood in this context.
In more general terms, it must not be forgetten that strictly speaking there is no coincidence between bad faith as a possible feature of a domain name registration and the targeted sign being a well-known trade mark (even if reality has shown that the two do often concurr), since bad fatih could in principle occur nothwhistanding the ranking of the sign involved (see § 7 below).
Two questions have now to be answered.
First, does Italian TML provides for a sui generis protection of well-known trade marks? And, in the affirmative, is this protection submitted to spefic conditions and which? Then last, but non least, when is it that a trade mark can be established as a well-known one?
Indeed the Italian TLM in the aftermath of 1992 amendments provides for a specific protection of well-known trade marks (sect. 1.1.c, 17.1.g TML) irrespective of the specialty rule and under precise conditions (prejudice and /or unjust advantage) that will be further investigated later, in particular regarding their role throughout the internet.
The point is now to understand when this protection applies, that is when a trade mark can be claimed as well-known.
Reference has now to be made to the EC judgment in the General Motors/Yplon that case can be regarded as a cornerstone in the matter.
The Court’s grounds for reasoning are that a ‘trade mark with a reputation’ should be understood as meaning a trade mark having a reputation with the public concerned, which is something clearly distinguished from a 'well-known' mark referred to in Article 6 bis of the Paris Convention. Moreover, it is sufficient for the mark to have a reputation in a substantial part of territory of a single Member State and marks having a reputation in a region merit as much protection as marks having a reputation throughout the entire State, to reach the conclusion that:
“The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark”.
(EC Court of Justice, 14.9.1999, case C-375/95)
Accordingly, the sui generis protection of well-known trade marks will show a tendency to expand to a significantly larger area than in the past, whether off- or on-line, reducing the claimed exceptional nature of said protection.
Going back to our main topic, practice has shown that the particular content of well-known trade marks protection appear to fit comfortably well into the problem solving that surrounds domain names grabbing on the internet.
What are then the fundamentals of this protection and why do they appear to be so suitable to counteract domain names grabbers?
As briefly mentioned before, sectt. 1.1.c and 17.1.g TML provide that well-known trade marks are protected, irrespective of the goods of services involved, against a third party’s registration or use of a similar or identical trade mark when a prejudice to the rightholder or an unjust advantage for the infringer are likely to occur.
The rule is of course grounded in the rationale that when a well kown trade mark is at stake, the legislative task is to provide protection against the dilution of its distinctive character and the weakening of its selling power, all embodied in the message of high reputation delivered by such trade mark.
Indeed when it comes to the internet, this rule has turned out to be a golden one to react against domain name grabbing, since no one can doubt that the registration of a domain name corresponding to a well-known trade mark can be questioned by its legitimate holder without regard to the content, if any, of the site at issue, even disregarding the bad baith intent of most of the first-times grabbers.
With regard to the domain vs. well-known trade mark dispute, this approach leads us far away from the entanglement with confusion as to products of services with all the tricky questions scrutinized before.
The courts in Italy are uphelding this reasoning when deciding that:
“The use of a third party’s well-known trade mark as a domain name for a website relating to products other than the ones for which the first trade mark was registered amounts to an infringement of said mark as allows the user to extract an undue advantage from the famous trade mark reputation and involves a prejudice to said mark”
(Court of Vicenza, 6.7.1998, GADI, 3824, with regard to the domain name Peugeot).
But the core question becomes now the one to understand the outer limits of well-known trade marks protection and to establish what can be said to amount to a prejudice or advantage in the TML sense when the sui generis protection of such a trade mark is sought on the internet.
It is a Europewide debate since well-known trade marks protection was laid down in common terms by EC Directive 89/104 and has from there spreaded troughout all EU Member States legislations.
In other words, when can it be said that a third party by registering a domain name identical or similar with a well-known trade mark is causing a prejudice to its legitimate righholder or acquiring an unjust advantage?
And in approaching the theme we must look at the advertising power of the internet and at its commercial effectiveness face the interest that a party may have, particularly when holding a famous trade mark, in appearing on the net with a worldwide, coherent brand image.
The courts have provided for a range of answers to the outlined question, even if in the overall these do not seem to be entirely satisfactory.
As far as prejudice is concerned, decisions have frequentely tended to stick to common statements when construing the well-known trade mark holder prejudice in terms of risk of confusion (exactely when we are by definition outside this area, see inter alia Court of Macerata, 2.12.1998, Dir. Ind. 1999, 35 and Court of Vicenza, 22.3.2000, GADI 2000) both referring to art. 1.1.c TML on well-known trade marks but recalling as a striking element the risk of confusion); occasionally the fact that the infringer’s offer may be of a lesser value than the original one has been considered as a source of prejudice (Court of Vicenza, 6.7.1998, in GALLI, I domain names nella giurisprudenza, cit., p.150) as well as the attempt to the image and the value of such mark (Court of Parma, 22.1.2001, in GALLI, I domain names nella giurisprudenza, cit., p.447; the case has dealt with the registration of the domain name Prosciutto di Parma for a site selling sexy clothes).
I think that in order to focus on the real prejudice caused to a well-known trade mark holder’s by the registration of a corresponding domain name by a third party, one should take into consideration two facts: on the one side, the technical constraints of the internet that forbid more than one registration for each sign, at least under the same TLD, and on the other that, according to TML rules, well-known trade marks are to be protected with regard to their advertising value and selling power.
If one matches the two above, he comes to the conclusion that when a well-known trade mark cannot be exploited on the virtual shop window due to a third party’s previous occupation, here the prejudice to its distinctive character is straightforward; surfers tend to locate one’s offer by typing the famous trade mark followed by the most likely relevant prefix; if the reached site doesn’t belong to the legitimate holder in the real world, there is a first sight misleading effect of the consumer with an atttempt to the selling power of the famous trade mark which amounts to a relevant one according to TML rules.
The courts have largerly upheld this reasoning.
The Court of Genova has clearly enshrined the:
“paralysing and obstructive effect to the legitimate trade mark holder’s registration” of the corresponding domain name registration
(17.7.1999, Dir. Inf. 2000, 341).
The Court of Rome has added that the trade mark holder is, as a result of the third party’s conduct, banned from registering the same domain name and this could result:
“into a serious obstacle to perform his commercial activity trough the internet”
(22.12.1999, in GALLI, I domain names nella giurisprudenza, cit., p.219; see also Court of Parma, 22.1.2001, ivi, p.447).
When talking about the undue advantage that the adotpion of a well-know trade mark in a different field could bring to the registrant, one must think at the attraction that a domain name identical or similar with a famous trade mark could exsercise on consumers.
It has been correctly pointed out that surfers are attracted only for a short time since they will turn away as soon as they realise to have reached the wrong location .
Nontheless, even such a short time is precious in terms of visibility of the ads shown by the site and as a site’s value is made up of the number of accesses, this ‘false’ increase in visitors easily turns into an undue advantage for the site’s holder allowing for a maliciously generated bargaining power to be spent with the adverstisers.
Two leading case must me recalled on this topic.
The court of Viterbo in the Touring case (Touring is a leading italian operator in road and automobile clubbing and travelling) has said:
“the aim of all sites is to realise the maximum of visitors that by accessing the site or merely passing through it, could read and see the advertisements (so-called banners) so that the owner could then sell ads space on his site relying on this inlfated number of visitors”
(24.01.2000, Foro it. 2000, I, 2334);
and the Court of Rome in the Altavista case added in clarer terms that:
“even if ABX (the receiver’s) site was merely directed to provide information about the estate market, the diversion of surfers caused by the undue expoitation of the famous Altavista name allows to capture in the third party’s site all the surfers pointing at the corresponding search engine. This results into a wide circulation of the adverstiments on the exploiter’s page, following which the general public of operators is led to believe into a force of penetration and effectiveness of ads on that site that otherwise would not exist at all”
(13.10.1999, GADI 2000).
If this is true, I think that it is fully correct with regard to the use for an internet domain name of a well-known trade mark to construe sect. 1.1.c TML concept of undue advantage in terms of a ‘per se’ advantage, that the third party waits to extract in terms of an increased adverstising value of his site (GALLI, cit., p. 58).
A few words must still be spent on the issue of the mere registration of a domain name identical or similar to a well-known trade mark.
As we have already seen in more general terms (see§ 5 above), in the case of a registration of a domain name without use the problem is that one term (the one of products or services) is missing in order to carry on a judgment of confusion.
But when a well-known trade mark is involved the problem can be overcome by definition and the only open question remains to esatblish whether also mere registration, as the full exploitation, can allow an undue advantage for the third pary and cause a prejudice to the legitimate holder according to sect. 1.1.c TML.
In accordance with the arguments illustrated so far, jurisprudence has upheld the conclusion that mere registration of a domain name by a third party, in the case of a well-known trade mark, can be a source of a legally relevant prejudice for the rightholder and can therefore be condamned (see Court of Parma, 11.1.1999, in GALLI, I domain names nella giurisprudenza, cit., p.165; Court of Parma, 22.2.1999, in GALLI, I domain names nella giurisprudenza, cit., p.176 ; Court of Genova, 17.7.1999, cit.; Court of Vicenza, 22.3.2000, cit.; Court of Parma, 22.1.2001 cit.; Court of Parma, 26.2.2001, in GALLI, I domain names nella giurisprudenza, cit., p.482)
And we have now come to the last stage of our review of the the substatial remedies envisaged by the Italian courts in the ‘domain names vs. trade marks dispute’.
Infact, the ultimate resort in the case where a domain name registration is coloured by a bad faith intent on the side of the registrant, often the intent to speculate by reselling such domain to the corresponding trade mark holder, is to sect. 22.2 TML which in general terms addresses the issue of the bad faith registration of a trade mark.
This will be the subject of the forthcoming paragraph.
The Court of Milan adopts a pathbreaking approach: bad faith registration of a trade mark (sect. 22.2 Trade Mark Law) as applied to domain names
With particular reference to domain names grabbing, where a third party register an interfering domain name with the intent of reselling it at the legitimate holder at the highest possible price, a fact that is often supported by the absence of use of such domain, it has been once suggested by the authors that application should be made of art. 22.2 TML (see SENA, Il nuovo diritto dei marchi, 3d ed., Milan 2001, p. 131 ff., note;VANZETTI-DI CATALDO, Manuale di diritto industriale, 3d ed., Milan 2000, p. 301; GALLI, cit., p. 63).
Article 22.2 TML sets forth an indipendentent ground of nullity of registration when it was sought with a “bad faith intent”. Art. 22.2 has transalted into our domestic legislation the principle laid down by art. 3.2.d) of EC directive 89/104 which has been accordingly incorporated into all EU Member States legislations. This is only to suggest that the forthcoming conclusions could equally apply in other countries throughout the European Union.
The rule that a trade mark registration is affected by nullity if a bad faith intent is proved in the side of the registrant can be extended as a generale principle also to a domain names registation provided that the latter is fully classified as a distinctive sign. In this connection, an application of this general principle could be figured out.
As extensively argued here above, it is now a commonplace opinion among the courts and the scholars that a domain name is a distinctive sign; therefore rule of art. 22.2 could apply as a general one in the field of distinctive signs.
This statement entails some important advantages.
Art. 22.2 TML sanction of nullity infact applies under no other conditions than bad faith; this means that can apply equally to ordinary trade marks, well-known trade marks and other distinctive signs, irrespective of the degree of confusion or of the range of reputation, whenever registration has been sought in bad faith.
It is thus stragihtforward that this construction allows to overcome the need to evaluate similarity or reputation of the signs in cause as well as to tailor a specific protection for the sign when its appropriation is led by a malicious intent, such as in the case of ‘domain names grabbing’.
The Court of Milan, first among the courts, has followed this approach in a litigation having its object in the well-known trade mark ‘Ventaclub’ belonging to a tour operator whose registration as domain name was filed by a third party having no intent bu to to resell it to the corresponding trade mark holder.
The Court has judged that:
“A long-lasting absence of use of a domain name whose registration dates from two years before the pending litigation reveals that it was sought with the mere intent of disturbing and profiting form the reputation of the plaintiff’s trade mark and with the declared aim (evidence was furnished on the point) of reselling such registration at an unreasonable price;…these circumstances support the finding of bad faith on the side of the receiver in registering the domain name ‘Ventaclub’ that is therefore affected by nullity according to art. 22.2 TML; art. 22.2 can be considered as a general norm that must apply to all distinctive signs that interfere with another’s exclusive right. This purpose-built protection in cases of cybersquatting allows to avoid consideration of the issue of the degree of a mark reputation ex art. 1. 1. c TML”
(Court of Milan, 9.8.2001, published in this issue of IIP).
Although dictated in a case concerning a well-known trade mark, I suggest that the general application of art. 22.2 TML mandated by the Court of Milan could spread its force on the entire field of trade marks, whether well-known or ordinarily protected within the limit of confusion, provided that bad faith is proved; no doubt, of course, that this latter requisite would render it most appealing, allowing to jump over the assessment of the relevant conditions for protection (a prejudice for the holder and an advantage for the third party), when the target of grabbing is a well-konwn trade mark, where statistically a bad faith intent is more frequent than for ordinary trade marks.
As already mentioned, application of art. 22.2. TML requires that a bad faith intent on the side of the domain name registrant is ascertained.
Several circumstances can be taken into consideration in order to prove bad faith.
The courts have already enshrined some of these circumstances, but reference to the examples put forward in the frame of art. 22.2 TML has also to be made.
The Court of Milan in the Ventaclub case has drawn evidence of bad faith from the concurring facts of the site being inactive, on the one hand, and of the attempt made by the registrant to resell domain name to the trade mark holder speculating to extract the maximum profit.
It has also been suggested that evidence of bad faith can be drawn from the circumstance that a party, according to art. 4 of the Naming Regulations, proceeds to a number of domain name registrations, all of which correspond to several famous trade marks belonging to others (Court of Parma, 26.2.2001, cit.)
As far as art. 22.2 TML is concerned, it has been argued that it introduces a new principle that has to be interpreted along with the other rules governing trade marks. In particular, as art. 22.2 TML sets forth a self-standing ground of nullity, an effort must be made to find it a room for application outside the case when a party enters registration knowing that he is infringing some other right; all these latter cases are infact already sanctioned by nullity because of the lack of novelty and stand as counterfeiting on their own, whether a trade mark or a domain name are at issue.
On the contrary, the rule of bad faith becomes extremely meaningful whenever its occurence turns into illegitimate a conduct that would otherwise be lawful (SENA, Il nuovo diritto dei marchi, cit., p.131).
The following examples have been suggested in the field of trade marks and should equally apply when talking about a domain name registration.
Think about an unfaithful employee who is informed that his employer is planning a certain activity on the web using a given domain and who then decide to enter the same domain name registration under his name, envisaging the possibility to make a bargain with the resell (the same could apply to the competitor’s analogous behaviour). A merely abusive conduct could also be of relevance for art. 22.2 TML if, for example, multiple registrations are sought absent any intent to carry on whatsoever activity and only aiming at hindering competitors in finding a name and at making out of the names a profitable commerce (this may be a case of trade mark or domain name misuse).
A final remark must be made about the consistency in a more general perspective of art. 22.2 TML oriented approach to domain names grabbing.
From a purely domestic point of view, the rules adpoted by the Italian Naming Authority and governing the grant of domain names provide for the possibility to put on hold a challenged domain name and to transfer it to the legitimate trade mark holder at the end of the so-called ‘reassignement procedure’ (procedura di riassegnazione) that covers:
“.…any domain name with respect to which a third party states the following:
a) that the disputed domain name is the same or such as to mislead with respect to a trade mark on which the claimant claims rights, or with respect to the claimant's name and surname; and that
b) that the existing assignee (hereinafter referred to as the "defendant") has no right or title with respect to the disputed domain name; and finally
c) that the domain name has been registered and is used in bad faith”.
(art. 16.4 of the Naming Regulations).
Subsequent art. 16.7 states that:
“The following circumstances, if proved, shall be considered as evidence of registration and use of the domain in bad faith.
a) Any circumstance which may cause the domain name to be considered as having been registered for the main purpose to sell, transfer the domain name for use or otherwise, to the claimant (who holds rights in the trade mark or name) or one of his competitors, for a consideration, either money or other, exceeding the costs reasonably incurred into by the defendant for registration and maintenance of the domain name;
b) The circumstance of the domain having been registered by the defendant in order to prevent the holder of an identical trade mark from registering such domain name as his own, and it being used for activities which compete with the claimant's activities;
c) The circumstance of the domain name having been registered by the defendant for the main purpose of damaging a competitor's business or usurp the claimant's name and surname;
d) The circumstance of the domain name having been expressly used to attract Internet users, for profit, by originating reasons for confusing it with the claimant's trade mark.
The listing above is only an example. The board of arbitrators can, therefore, argue other elements of bad faith in the registration and use of the domain name, even from circumstances other than those listed above”.
(For the full english version of the Naming Regulations see: www.nic.it/NA/regole-naming-engl.txt).
I’m not suggesting that the concept of bad faith should apply exactely in the same terms to the Trade Mark Law as to the administrative field of internet domain names assignement governed by the Naming Authority Regulations; the point has already been addressed, but the fact remains that bad faith has a relevance of its own when a domain name registration enters into a conflict with a third party’s right over the same or a similar sign.
Looking outside the national borders, bad faith is the key concept around which the US Anticybersquatting Consumer Protection Act of November 29, 1999 was built in order to fight the increasing number of cases of domain name grabbing.
The Act has amended sect. 43 of the Lanham Act allowing for protection of a trade mark, including a personal name protected as a mark, if, without regard of the goods or sevices of the parties, a person has a bad faith intent to profit from that mark or personal name protected as a mark and registers a domain name that is identical or confusingly similar to that mark, or even only dilutive in the case of a famous mark.
On the side of the trade mark holder, the usurped trade mark need only to be ascertained as distinctive or famous, if in the case of a famous trade mark. Proof of registration is not required, nor it is required any sort of relation regarding the goods or services of the parties.
Among the factors that can be considered by the american courts to determine whether a person has the bad faith intent described, we notice that many are among the ones that we have pointed out here above, supporting the idea that, at the international stage, it emerges a quite coherent picture on the subject. It suffices to recall the followings: the fact that the domain name is covered by a third party’s trade mark or other intellectual property right, that the person’s intent is the one of creating a likelihood of confusion as to the source, sponsorship, … of the site, that the person has offered to transfer the domain name to the mark owner for financial gain without having used it, that the person has acquired multiple domain names identical or confusingly similar to marks of others or dilutive of famous marks of others.
Considered the above, art. 22.2 TML based approach appears indeed a suitable instrument to fight the plague of domainnamesgrabbing, allowing to ovecome many of the difficulties raised by the classical paradigm of a trade mark driven protection and showing a good degree of coherence with the internal and international panorama.
A few practical open questions: a) jurisdiction of the Italian judge; b) the role of the Registration Authority face a jurisdictional procedure.
To conclude , a quick glance shall be given to a couple of questions of great practical interest; the first dealing with the boundaries of jurisdiction of the italian judge in the disputes arising on the internet and involving the violation of a right held in the territory, the second concerning the enforcement against the Registration Authority (RA) of a court order concerning a domain name.
a) Jurisdiction of the Italian judge.
Every one is aware that one of the hottest problems posed by the internet is the abscence of boundaries of the world wide web. This means that once a piece of new, a datum, a copyrighted work, a protected trade mark is put on the web it becomes immediately visible throughout all the countries connceted, a situation which openly threathens the application of the so-called territoriality rule which has ever since governed the application of IP rules.
Having said so, the more practical problem is now the one to understand when can it be affirmed that the italian judge has a title of jurisdiction over the violation of a trade mark protected in Italy (national, international or a Community trade mark) and committed through the internet, be it the conflict between a domain name and a trade mark or the illegitimate use on the net of the trade mark itself by a third party.
First, we must look at the ordinary rules set forth on the matter of the international jurisdiction of the italian judge by the Brussels Convention of 1968 and recalled by art. 3 ff. of Law 218/1995, which regulates the system of Italian international private law.
According to the primary rule of art. 2 of the Brussels Convention, a foreign person can be subject to Italian jurisdiction if its domicile or residence is estabilshed within the territory or if there is in the territory an established representative. If this is not the case, an italian judge’s jurisdcition could be grounded in art. 5.3 of the same Convention each time that the server housing the site under discussion is located in Italy.
This conclusion, which is of particular interest in the case of domain names registered by a foreign party under the county TLD .it, derives from art. 5.2 of the Brussels Convention whic states that in the field of extracontractual damages a title of jurisdiction subsists in the place where the illicit conduct was held or the event has manifested. In the present case, it is stragithforward to argue that the illicit conduct is held where the supposedly illict injection of the data in the net has taken place, that is where the contested server resides.
The question gets more complicated in the event that a violation through the internet regarding the italian territory is committed by a foreign party non connected with such territory and using a server that is located abroad, a sitation that will tipically occur when the site is registered under a generic TLD or a country TLD other from .it.
The key question to be raised and answered in such an event is the following: does the mere visibilty in a given country (Italy, or other) of a supposed illicit conduct suffice to radicate the jurisdiction of the judge of that country, being mere visibility the ‘illicit event’ on which jurisdiction can be alternatively grounded according to art. 5.3 of the Brussels Convention?
It is obvious that, in the affirmative, it should be concluded that each jurisdiction in every country connected in the web could concurr with the others over substantially the same case, with an high risk of uncertainities and conflicting decisions emanating from the different authorities. Moreover, were the national party to obtain a favorable judgment against a certain ‘foreign domain’ (using foreing in the sense shown above) he could enforce it and block the entire infringer’s site with an effect over the entire www., at least in a case where it appears technically impossible to paralyse only the national fraction of it and, I imagine, that this could happen as a result of a mechanism of automatic recognition of judicial orders similar to the one provided for by the Brussel Convention and art. 64 ff. of law 218/95 3.
Although there is a domestic decision pointing in this direction (Court of Rome, 9.3.2000, Dir. Inf. 2000, 360) and although a similar tendency has been recorded also in other countries such as the US [see Playboy Enterprises, Inc. v. Chuckleberry Publishing, Co., 939 F. Supp. 1032 (S.D.N.Y. 1996)], I don’t think for the reasons above that this is a viable option.
Instead of the mere visibility of a site located abroad and carrying distinctive signs that infringe a right protected in a given territory, an activity of an essentially passive nature, one should look, when considering the place where the event has taken place, at the existence of a closer link with the territory such as the one consisting in an activity specifically directed to sell good or sevices to the customers in that country.
The US courts’ majority has taken this view since the two leading cases Blue Note in the Second Circuit [Bensusan Restaurant Corp. v. King 937 F. Supp. 295, aff’d 126 F.3d 25 (2d Cir. 1997)] and Cybersell in the Ninth [Cybersell, Inc. v. Cybersell, Inc. 130 F.3d 414 (9th Cir. 1997)].
It is argued whether also a preliminary promoting or advertising activity carried on the site and preceeding the stage of conducting an actual business could suffice to establish jurisdiction (in favour see Inset Systems, Inc. v. Instruction Set, Inc., 937 F. Supp. 161).
According to this reasoning, when from the circumstances of the case none of these elements emerge, there is no title for the national authority to have jurisdiction over a distinctive sign violation. When can look at the following examples where reference to Italy is for pure illustration: the site uses a language that is not understandable by an Italian consumer; shipping orders originating from Italy are simply not accepted by the system (e.g. the site only processes orders bearing a zip code number and a state indication); at an earlier stage, for some countries the site does only inform about the products and e-commerce functions are not yet active; to sum up, when the national consumer cannot enter into a (potential) commercial relation with the site’s holder, jurisdiction in that country has no title to subsist.
There are already some decisions that have followed this direction.
The Court of Rome has affirmed that:
“mere visibility of a mark on a web page, unaccompanied by other connecting elements with the territory, is not enough to establish jurisdiction of the judge residing in one of the places where the message can be received because, when neither the service provider nor the site’s holder are established in Italy, here there must at least be taking place an infringing activity of said mark…When dealing with a trade mark infringement through the internet it is not needed, to radicate jurisdiction, the actual import of goods bearing the infringed mark into the Italian territory, but at least what is needed is an offer to buy the products in Italy, or the starting of an adverstising campaign in Italy aiming at establishing a commercial contact within the country in order to furnish the products or services bearing the infringed sign (whether a trade mark or a domain name)…”
(2.2.2000, Dir. Ind. 2001/1, 60 ff., 63),
and the Court of Verona has added that:
“The confusing use of an Italian trade mark in the context of a foreign site and its use as domain name of the site itself, whose pages are written in Italian and clearly directed to the national market consitute an infringement carried on in Italy”
(14.7.1999, in GALLI, I domain names nella giurisprudenza, cit., p.200).
Due to the outlined possibility that, in the different states, different solutions as to the criteria to be followed in establishing the domestic judge’s jurisdiction over the infringement of a distinctive sign are adopted, it is higlhy recommended, in order to avoid the risk of cumulating a set of irreconcilable decisions, that an agreement at the international level is reached on the point, as well as on the one of the applicable law.
Once jurisdiction is established, we still have to decide which substantial law rules the case.
According to the Italian system of choice of law, the applicable law in case of torts is the law where the event has taken place (art. 62, Law 218/1995). If this were the only rule, we would reach on the point the same conclusion outlined above and concerning the jurisdiction of the italian judge in the case of a tort of infringement committed by a person or entity whose domicile or office is abroad and without an established representative in Italy or through a foreign site
Art. 62 provides also for other concurring rules suchs as the one that the applicable law is the one of the place where the conduct was held (in our case, where the illicit information has been inserted into the site, that is where the server is located) or the national one of the parties, if they do so agree and hold a common nationality.
It has also been suggested by some authors that the applicable law should be determined according to the rule of territoriality that traditionally applies to intellectual property rights; art. 54 of Law 218/1995 infact rules that IP rights are governed by the law of the place where they are exploited which means, in our case, the Ip laws of Italy and accordingly all the different laws of the states where the right is exploited (or better, violated).
No matter which solution is finally adopted, the risk tends to be the one of a huge number of substantial laws applicable to the case of an infringement of a distinctive sign committed on the internet, a situation which is in open contrast with the demand for a unitary position raised by the net. The internet is in fact characterised by a worldwide unity that can not support a set of conflicting decisions over the same matter, eventually caused by the application of the law of each of the states where its contents are received.
Should I imagine what direction to follow in order to overcome the obstacle, I would first suggest that by definition a uniform solution can only be figured out at the international level.
Second, in suggesting such a rule, one might look at the one chosen so far in the near field of satellite and cable transmission which surely shares with the internet the fact that a content once transmitted can be received extensively.
The drawback of the simulaneous application to a given transmission of all the laws of the countries where the signal is received led EC legislation (art. 1.2.b of EC Directive 93/83) to lay down a uniform rule that identifies as the only applicable law the one of the place where the signal has been first inserted into a sequence of satellite communication.
Provided that this solution identifies only one relevant legislation, it raises a serious problem when the so-called state of origin (in the case of the internet, the one where the server is located) does not conform with the minimum standards of protection agreed upon by the international community.
The issue, as far as satellite transmission is concerned, is dealt with by art. 1.2.d (i, ii) of EC directive 83/93 and its substance should be considered in the case of internet transmissions if we aim at avoiding that this rule is cheated simply by placing the server (and by registering a domain name) in the land which has been colourfully described as ‘Remotistan’ (the expression is taken from RICOLFI, A Copyright for Cyberspace? The European Dilemmas, AIDA 2000, 443).
b) The role of the Registration Authority face a jurisdictional procedure.
Being the entity in charge of the task of the domain names registration, the role of the Registration Authority (RA) face a jurisdictional order concerning a domain name must be shortly investigated.
There are two practical questions to be answered.
First, to what extent, if any, is the Registration Authority bounded by the ordinary judge’s decisions?
Second, is it necessary that the Registration Authority, being the body in charge, participates in every litigation where a domain name is under discussion (which in practice would mean that the claimant must sue the RA in the process if he wants the judge’s order to be enforceable) ?
In Italy the rules of naming establish that, following an order emanating from a court, the Registration Authority is bound to suspend the assignement of a given domain name until a final decision is reached 4. Following a definitive judgement, the RA will definitely cancel the domain or return it to the registrant according to the court’s decision (rules 12, 12.1), nothwhistanding the fact that he has not participated in the judgement.
If the claimant is satisfied with this mere suspension, according to these rules he will not need to directly call the RA in the on-going litigation (see GALLI, cit., p. 103, but the Court of Modena, 7.12.2000, in GALLI, I domain names nella giurisprudenza, cit., p.412 has ruled that RA participation in the judgement is in any case compulsory).
But the circumstances of the case may render a mere order of suspension inadequate to restore the claimant’s position (think about the cybersquatting of a well-known trade mark) each time he is seeking to have back in the shortest time possible what he thinks he is entiteld to in order to be able to carry on his business on the internet.
If this is the case, we will probably be in a situation where revocation and/or reassignation from the RA are sought in the course of an ordinary judgement which can not lead into a final decision or, as the practice has demonstrated, in a preliminary judgement, which again is not the kind of definitive decision that the RA is bound to observe according to the rules of naming.
At this stage, it has been held that in principle the RA is not bound to respect a jurisdictional order to cancel or reassign a certain domain except that in the cases provided for by art. 11.3 (cancellation following a definitive judgement) and 16.6 (specific reassignation procedure) of the Rules of Naming.
Some the courts have opined differently, holding that the RA can be ordered to suspend the domain name (Court of Modena, 7.12.2000, cit.) and even to temporarily assign it to the supposed legitimate holder, provided that he was involved in the litigation (Court of Cagliari, 30.3.2000, in GALLI, I domain names nella giurisprudenza, cit., p.286).
It has already been noticed that it is highly questionable that at least the order to put on hold the domain name directed to the RA requires that the latter is called directly into the (preliminary) proceeding.
Nevertheless, the only way to have the RA cooperation in a case where the revocation of the domain name under discussion and possibly the temporary reassignation to the claimant or put on hold of his futher assignement to everyone else are needed - the mere revocation does not prevent from reassignation of the domain name to a third party - is that the claimant addresses his istances also to the RA, which will be accordingly bounded by the judges’s (preliminary) order (see Court of Modena, 14.2.2001, in GALLI, I domain names nella giurisprudenza, cit., p.476).
To conclude, due to the practical reason of putting oneself in the better position possible towards the RA when a domain name v. trade mark litigation is pending and due to the degree of jurisprudential uncertainity still surrounding the matter, I would nevertheless advise that the RA is sued in all the disputes involving a domain name before the Italian judge.
3 Article 25 and ff. of the Brussels Convention provide for such a mechanism for the recognition of the judicial decisions among its members. In Italy, provided that the conditions laid down by artt. 64 ff. of Law 218/1995 are fulfilled, a decision emanating from a foreign judicial authoitry is also automatically enforceable.
4 In procedural terms, a decision becomes final when it can no longer be reviewed according to the ordinary mechanisms of appeal or when all the stages of appeal have been exhausted. We are talking about quite a long period, if compared with the pace of the world of the internet.