Speech at the conference on the international sale of movable property.
[:en]On 15.11. on the occasion of the conference on the international sale of movable property in the Aula Magna of the University of Verona, I had the pleasure of briefly presenting a topic that I have already dealt with in the following articles: the sale of the domain name e tld (internationally).
If it is of interest to you, here are the slides of the conference.[:]
But could an American in Rome also use the .eu?
[:en]On date 12 July 2012 the European Court of Justice issued a very interesting ruling in the field of internet law and e-commerce. Specifically, it stipulated that top-level domains (Tld - top level domain) ".eu" are only reserved for companies that have "its registered office in the territory of the EU'..
In particular, under EU law (Article 12 of Regulation No 874 of 2004) registration of the Tld '.eu' can only be applied for by the "domain names [...] of registered national trade marks, registered Community trade marks, [...] and holders or licensees of prior rights."
The Court of Justice, in interpreting the above-mentioned rule, considered that for "licensees of pre-existing rightsi' may not include companies or persons from the european union who limit themselves, at the request of a trade mark proprietor established in a third country, to registering the trade mark without being allowed to use it in the course of trade.
The present case, to make the matter clearer, involved a American society(Wlash Optical), which is active in the online sale of contact lenses and other eyewear. It has operated www.lensworld.com since 1998 and became the owner of the Benelux Lensworld trade mark, registering it on 26 October 2005. In November 2005, it decided to enter into a licence agreement with Bureau Gevers, Belgian company advising on intellectual property issuesto register the domain 'lensworld.eu' in its name, but on behalf of Walsh Optical itself. at the UERid.
One year later, Pie Optiek, a Belgian company competing with the American company, also applied for registration of the website "www. lensworld.eu." This request is, however, rejected.
Pie Optiek therefore brought an action against the American company, claiming that, as it was based in a third country, it was not entitled to use the .eu domain. The court of first instance dismissed the action. Pie Optiek appealed against the judgment. The Brussels Court of Appeal referred the case to the Court of Justice requesting an interpretation of Article 12(2) of Regulation No 874 of 2004. The Court thus holds that a person who is merely authorised by the proprietor of the trade mark, established in a non-member country, to register in his own name, but on behalf of the licensor, a domain name identical or similar to the trade mark itself, without, however, being permitted to make commercial use of it, cannot be regarded as a licensee of prior rights.
The Court notes on this point how the .eu top level domain was created in order to increase the visibility of the internal market in virtual Internet-based tradeby offering a clearly identifiable link to the European Union, the associated regulatory framework and the European market, and by allowing EU companies, organisations and natural persons to register in a domain that makes this link obvious.
For this reason, domain names should only be registered if requested by any party that meets the criteria of presence in the territory of the European Union. More precisely, by companies that have their registered office, central administration or principal place of business in the territory of the Unionby any organisation established in its territory as well as by any natural person residing in the territory of the European Union.
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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 - e.g. .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.
- The TLD can essentially be of two types, generic (gTLD) (when it is used to distinguish, the sector of operation (.com), business (.org) or geographical (country code Top Level Domain ccTLD) when it is capable of signalling the 'virtual' location of the computer (.it, .de)
- 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 "TLD" of the company's trade mark). www.abcd.it and www.abcd.fr)
- In the case of well-known trade marks, the problem of the TLD does not even seem to arise, since the counterfeiting of the sign is also in re ipsa linked to the registration of the domain name, regardless of the TLD it has and even in the absence of actual use
- in the cases of non-renowned trade marks can therefore be considered as '.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
[1] Court of Reggio Emilia 30.5.2000 (ordinance); Peyron, Giur. it. 2001, 96.
[2] Court of Reggio Emilia 30.5.2000 (ordinance)
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