Internet law II. The trade mark and the TLD.

[:en]The domain name consists of a Top Level Domain (TLD) and by a Second Level Domain (SLD). THE TLD can essentially be of two types, generic (gTLD) (when it is appropriate to distinguish, in principle, the sector of operation - for example, .com for commercial activities and .org for organisations non-profit) or geographical - country code Top Level Domain (ccTLD) (when it is capable of signalling the 'virtual' location of the computer).

Consider, that there is no guarantee that, in practice, to a geographical domain, for example .en for Italy, .fr. for France and so on, actually corresponds to a computer located in the territory evoked by the ccTLD.

The assignment of domain names is carried out by bodies whose task is to establish the procedures for registering domains and assigning them to applicants marked by the country code '.it'. Each state has its own bodies in charge of these functions, and each country operates independently, as the various states are distinguished by their own country codes (.de, .fr, .nl, .be). It will therefore be possible for the same domain name to be used by different parties in different states and for the addresses to differ only by country code (e.g. '.www.esempio.it" e www.esempio.de"). On the basis of the above, the Internet being a worldwide platform, regulated by independent state bodies, it is evident that the risks and opportunities for confusion between domain names used by trade mark owners operating in different parts of the globe, will be increasingly numerous and frequent.

The question therefore arises as to whether the owner of a trade mark registered in Italy may take action to prevent a third party from using a domain name containing his company's trade mark if it is characterised by a different TLD (e.g., "the trade mark of the company"). www.abcd.it and www.abcd.fr).

Here too, a distinction must be made between renowned and non-renowned brands

 a)   renowned brand cases

According to doctrine and case law in the case of trade marks with a high reputation, the problem of the TLD does not even seem to ariseas the counterfeiting of the sign is also in re ipsa related to the registration of the domain name, regardless of the TLD it has and even in the absence of actual use.[1]

b)   cases of non-renowned trade marks

In trade mark cases so to speak sic et simpliciter, it does not seem tenable to assert that the owner of a registered trade mark, which is neither well-known nor well-known, can oppose the registration of an identical or similar domain name, but with a different TLD (e.g. .it and .de).

In fact, since the law on trade marks applies only in a national context, the owner of a trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory and cannot therefore prevent a third party from registering abroad a domain name equal or similar to that trade mark, but with a different TLD.

In any case, it must be considered that if the third registers the domain name abroad in order to direct users to its own site where it in fact advertises or sells certain competitive goods or services, in which case the territory in which the cotraffactive sign is placed on the network is irrelevant (e.g. formaggitaliani.it and formaggitaliani.com).

Indeed, given the global nature of the Internet communication system, each user, including Italian users, will be able to connect to the site corresponding to the domain name possibly confusable with the registered trade mark.[2]

It can therefore be considered that "the proprietor of the trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory, and cannot prevent a third party from registering abroad a domain name equal to or similar to that trade mark within a [different] geographical or thematic TLD, unless its use for offering for sale or advertising goods or services results in an infringement of the right.[3]

In conclusion, therefore, it is held that the owner of an Italian trade mark cannot prevent a third party from using a domain name confusable with the said trade mark if it bears a different TLD, at least that such registration has infringed the proprietor's right to use the trade mark, since it is likely to direct users to a website on which identical, similar or related goods or services are offered or advertised.

On the basis of the above, however, it is considered necessary, given the complexity and specificity of the discipline, for this opinion to be used as a guideline and for individual cases to be analysed specifically.

[:]