Alternative Dispute Resolution For Domain Names

Alternative Dispute Resolution relating to ccLTD “.it” domain names.

A specific alternative dispute resolution system (ADR) relating to domain names registered under the country code “.it” is available in Italy since 2000. This procedure, called Re-assignation Procedure for Challenged “.it” domain names (“Re-assignation” for short), has been set up by the Italian Registry, which is the organization responsible for formulating the rules for the assignment of “.it” domain names. It is also responsible for the actual assignment of domain names and the management of the National Registry and the primary Nameserver for the Top Level Domain “.it”.

Re-assignation is an administrative procedure, applicable to all domain names registered under the ccTLD “it” which have been previously challenged. Its purpose is to ascertain the entitlement to use and/or the lawful availability of the domain name by the person in whose name or on whose behalf the domain name has been registered (“the registrant”), and that the domain name has not been registered and/or that it is not being maintained in bad faith.

Re-assignation may be enforced and managed by special organisations (public or individual legal persons, including professional law firms located in the European Union) operating a Dispute Resolution Service (a “DRS provider”), which have been duly accredited by the Italian Registry on the basis of satisfying specific requirements. The accredited DRS provider maintains a “List of Experts”, comprising at least 15 people, from which the DRS will select the expert (in case of a sole expert) or shall appoint the three experts indicated (in case of a panel of experts) to whom the disputed registration is referred for decision pursuant to the Re-assignation procedure’s rules.

The choice of DRS provider to apply to and manage Re-assignation rests solely with the party interested in challenging the “.it” domain name registration (“the complainant”). All costs of the Re-assignation procedure are the sole responsibility of the parties to the dispute. The Italian Registry is not a participant in the Re-assignation and is not liable to any party for the work carried out by the DRS provider.

Tonucci & Partners, with a significant background in IT Law, has recently been accredited by the Italian Registry as a DRS provider for the above procedures, and has set up a List of Experts composed of highly experienced lawyers.

Complainants who dispute a ccTLD “.it” domain name, can select one or more experts who will conduct the ADR procedure in accordance with the prevailing scale of fees.

The procedure is filed by the complainant submitting a complaint which states the following:

  • That the challenged domain name is identical to or such as to mislead with respect to a trademark in which the complainant claims rights, or that the challenged domain name is identical to the complainant’s name and surname.
  • That the current assignee (the person in whose name or on whose behalf the challenged domain name has been registered – “the respondent”) has no right or title with respect to the challenged domain name.
  • That the domain name has been registered and is being used in bad faith.

If the complainant proves the co-existence of all the above conditions, the challenged domain name shall be transferred to the complainant.

On the other hand, the respondent shall be deemed to be entitled to the challenged domain name if he proves that:

  • Before being made aware of the dispute, he used or made demonstrable preparations to use the domain name or a name similar thereto in order to supply goods and services to the public.
  • He is known personally, as an association or commercial organisation, by the name which corresponds to the registered domain name, even if he has not registered the same or a related trademark.
  • He is making lawful use of the domain name for non-commercial purposes, or for commercial purposes without any intention to mislead the complainant’s customers or breach the complainant’s registered trademark.

The following circumstances, if demonstrated, will be considered proof of registration and use of the domain in mala fide:

  • circumstances that lead to the conclusion that the domain name has been registered with the primary aim of transferring, granting in use or in any other way transferring the domain name to the petitioner, owner of a name which is the object of an acknowledged right or one established by national or European law, or to a competitor of said for monetary or other compensation, which is higher than the costs reasonably borne by the defendant for the registration and maintenance of the domain name;
  • the circumstance that the domain name has been registered by the defendant to prevent the owner of the right to a name, trademark, denomination (also geographic) or other distinctive sign recognized by national or European law from using same name, denomination or other distinctive sign in a domain name corresponding to said and it is used for activities in competition with those of the petitioner or, for public organizations, judiciary or other state bodies, in such a way as to mislead the public searching for information regarding institutional activities;
  • the circumstance that the domain name has been registered by the defendant with the primary aim of damaging the business of a competitor or of usurping the petitioner’s name and surname;
  • the circumstance that, in using the domain name, it is intentionally used to attract, with the purpose of making profit, Internet users, creating the probability of confusion with a name covered by a recognized right or one established by national and/or European law or with the name of a public body;
  • the registered domain name is a proper name or the name of a public or private body for which no demonstrable connection between the owner of the domain name and the domain name registered exists.

The above list merely gives some examples and is not exhaustive. The Board of experts can therefore find elements of male fide in the registration and use of the domain name also from circumstances other than those listed above.

The procedure for Re-assignation is by voluntary submission of the parties and, as such, it does not prevent them at any time from applying in legal proceedings to the Courts or seeking a reference to the Arbitration Procedure provided by the Italian Naming Rules.

In addition, the Re-assignation procedure cannot be started pending a decision or judgment on the outcome of: 1) legal proceedings before a court of competent jurisdiction relating to the challenged domain name, or 2) an application to the Board of Experts, as provided by the Naming Rules. (being by Arbitration Procedure different from the Re-assignation procedure) or 3) a referral to an arbitration Board as per art. 806 of the Italian civil procedure Code. If court proceedings are filed or an Arbitration Procedure is started during the Re-assignation procedure, then the procedure shall be suspended pending the outcome of those court proceedings or arbitration.

If the DRS provider decides that the challenged domain name has to be re-assigned, the Board’s deliberation shall be enforced by the Italian Registry, unless the Registry receives, within 15 days from receipt of the Board’s deliberation, a suitably documented statement from the respondent that proves that the respondent has filed legal proceedings or initiated arbitration with respect to the challenged domain name.

If the legal proceedings or arbitration filed by the respondent are otherwise terminated, the Italian Registry shall enforce the Board’s deliberation on the complainant’s request.