Can the owner of a trademark ask to have an internet domain, dealing with different products, closed down?
Recently, even in Italy, there has been an enormous increase of controversies related to the conflict between the Internet domains and the registered trademarks. The domain name is the word with which we recognise the Internet site, and by keying it in the computer we can have access to the contents of it, for example by pressing “ferrari.it” we will see all the information related to the famous cars.
In the past it was claimed that whoever first registered a domain was the actual owner, regardless of any pre-existence of similar or identical trademarks, but this fact has led to many conjectures as, mainly in the United States, it happened that some famous trademarks were registered as Internet sites with the only purpose of selling them back to the trademark’s owners. In order to rise against this, many firms have started legal actions and, at the moment, we believe that a trademark’s owner can demand the closure of the site bearing his name if it is identical and if the products shown on the Internet are alike or related to his ones.
Another fact to be considered is the status of the name used for the Internet site, which could be regarded an unauthorised use of someone else’s name not only as this is a violation under the regulation on trademarks as stated in the Industrial Property Code, but also as this is unfair competition. Therefore, it is advisable to reach an agreement with the company making the demands, proposing to transfer to them the domain name upon a payment, so without risking any legal actions that, considering the recent orientations of the judges on this, could be disadvantageous for the owner of the domain.