As often happens, one of the most effective defensive strategies against this phenomenon is prevention. Whoever wants to undertake an economic activity and identify it with a trademark should proceed with obtaining one or more domain names corresponding to his/her own distinctive sign, possibly with the most widespread extensions (such as “.com” or “.it” for activities located on the Italian territory). In this way, the cybersquatter’s operating space is limited and the connected risks are radically reduced.
However, this is not always possible. Let’s take the event in which the domain name results to be already registered by a third subject. Or even, let’s think of the case in which the business owner, although being so wise to register a domain name corresponding to his/her trademark, realizes that another subject already registered and uses a similar but not identical domain name.
In these cases of conflict between the trademark and the domain name, the trademark owner has several tools available to try and get back the domain name illicitly registered and used.
The first one is to try and acquire the domain name through negotiations with the first registrant. It is a “mild” and “non-confrontational” approach which can be suitable for cases in which litigation might have limited chances of success. Our experience has proved that the attempt to buy is often dictated by budget reasons, as it certainly represents the cheaper option. These kinds of negotiations present objective difficulties and it is advisable that they are conducted by experts in order to both increase the chances of success and avoid risks to suffer from frauds (very likely when talking about domain names).
The second one is a “litigation” approach. Our law system establishes – alternatively to the ordinary jurisdictional remedies – some specific arbitration proceedings exclusively dedicated to recover domain names. The advantages of those procedures are essentially two:
- The economic factor: reassignment procedures are way cheaper than civil actions;
- The time factor: reassignment procedures usually finish within a couple of months while in civil actions the timeframe is much longer (2-3 years in the best case scenarios).
The disadvantage is that the requirements to achieve success in these procedures are very strict and often do not match with the premises used to recover a domain name in a lawsuit. In other words, it is possible to lose a reassignment procedure even when there are all juridical premises to recover the domain through judicial means. This happens because the laws underlying those remedies are different.
Reassignment procedures are regulated by a uniform law system varying based on the extension of the domain name to be recovered. Therefore, disputes upon generic domain names (so called gTLD and new gTLD) are settled differently compared to the “.eu” domains which again are regulated differently from the “.it” domains. These conflicts are managed by arbitrators (among others WIPO, CAC, ADR Forum; for “.it” domains Milan Arbitration Chamber, MFSD) and decided by expert judges in this field.
In a nutshell, in order to initiate a reassignment procedure successfully it is necessary that:
- The domain name is identical or similar to a trademark or another distinctive sign legitimately owned by the claimant;
- The owner doesn’t hold any right or legitimate interest to register the domain name;
- The owner registered and currently uses the domain name in bad faith.
Considering the peculiarity of these rules and their continuous evolution, it is appropriate that the trademark owner seeks an expert’s advice before initiating any possible reassignment procedure.
As an alternative to reassignment procedures, as mentioned, it is possible to initiate an ordinary proceeding against the cybersquatter. In fact, using a domain name in the economic activity can represent a trademark infringement and an act of unfair competition, of course when all premises are applicable. If reassignment requirements are not sufficient, the judicial means can be the only possible remedy. Moreover, the recourse to ordinary proceedings becomes necessary when, besides obtaining the availability of the contested domain name, the claimant also wants to get a damage compensation.
Ultimately, there are several possibilities to recover a domain name. Each one of these options has its own peculiarities and features and choosing the best option is up to expert professionals in this field.
