In today’s digital landscape, the notion of “digital identity” has become increasingly significant, much like the one of trademarks. The notion of digital identity encompasses that of domain names as intangible assets; these unique identifiers appear after the “@” symbol in email addresses and follow “www” in website addresses. In essence, a domain name functions as an Internet Protocol (IP) resource. This could be a computer accessing the Internet (host), a server that hosts a website, the website itself, or any other service transmitted over the Internet.
While IP addresses prioritize the initial part of the number from the left, a Domain Name System (DNS) focuses on the initial segment from the right, known as the top-level domain (TLD), for example, “.org” or “.it”.
Each domain name is distinctive, but numerous identical domain names can exist, solely differentiated by their extensions (e.g., .com, .it, .store, .online).
The process of assigning a domain name occurs entirely online and follows a technical procedure overseen by the relevant registrar, which varies based on the extension.
In light of the rapid growth of the web economy, domain names have become essential: they serve as a digital storefront for businesses, individuals, and more. However, this has also given rise to concerns regarding the secondary market for domain names, i.e., entities that register domain names not for their own use, but for resale to interested parties. This includes the so-called “cybersquatters,” a term coined to describe individuals who register domain names identical or similar to well-known names or trademarks, often with the intent of misleading Internet users or reselling these domains for profit.
To combat these rising challenges of cybersquatting and domain grabbing, individuals can now turn to expedited arbitration proceedings as an alternative to traditional legal routes. These procedures, often referred to as “reassignment arbitration procedures,” specifically aim to resolve disputes concerning the legitimate allocation of domain names.
These administrative procedures, which are available for most extensions, are conducted by independent authorities accredited by the Internet Corporation for Assigned Names and Numbers (ICANN) and the registrars appointed by it. The procedures share common elements, largely derived from the widely recognized Uniform Domain Name Dispute Resolution Policy (UDRP), which applies to all domain names established with generic top-level domain (gTLD) extensions like .com and .net, as well as to specific country codes, such as .co for Colombia and .au for Australia.
Across all arbitration procedures, certain characteristics are consistent: they adhere to the principles of adversarial proceedings and are conducted entirely in writing. An expert is appointed to determine whether the domain should be transferred to the party pursuing the complaint.
To initiate a reassignment procedure, three primary criteria must be met by the claimant:
- The domain name in question must be identical or closely similar to a validly registered trademark.
- The owner of the disputed domain must lack a legitimate interest in the registration of that domain.
- The owner must have registered the domain in bad faith, with speculative purposes, and/or with the intention of harming the legitimate owner or exploiting their reputation (certain circumstances – pointed out in specific lists – if demonstrated, may allow for inferences of bad faith).
For .it domains pertaining to Italy, which follow a variant of the UDRP, a crucial prerequisite for starting a reassignment procedure is the submission of an “opposition to the domain name.” This is a formal request sent to the Registry contesting a domain name. The purpose of this opposition is to “freeze” any transfer of the domain for 180 days (the timeframe within which the reassignment procedure must be initiated) until the dispute is resolved. This grants the party filing the opposition a right of pre-emption on the possible assignment of the domain.
To be valid, the objection must be clearly substantiated. It requires a comprehensive explanation detailing the right allegedly infringed, along with significant documentation to support the claim; otherwise, the opposition may be dismissed.
It is essential to know that the reassignment procedure can be pursued by any natural or legal person from a member state of the European Economic Area, the Vatican City, the Republic of San Marino, or the Swiss Confederation. Moreover, the procedure is open to anyone acting under a valid title (for example, a trademark licensee operating under a licensing agreement).
As previously mentioned, this procedure can culminate in either the reassignment of the domain name or the rejection of the claim. Notably, the administering authority lacks jurisdictional power and cannot mandate compensation for damages to the losing party.
Furthermore, the process can be halted if formal legal proceedings are initiated or if a mutual agreement is reached between the parties involved. In cases where the domain owner fails to respond to the objections presented, the dispute will be resolved based solely on the complaint submitted. Our Online Brand Protection team is available to provide you with more information and assistance regarding this compelling opportunity to protect your intellectual property rights in the digital realm.
