Alternative Dispute Resolution
for Domain Names

(Chambers Global 2014)

Alternative Dispute Resolution relating to ccLTD ".it" domain names: a brief overview of the Italian rules.

A specific alternative dispute resolution system (ADR) relating to domain names registered under the country code ".it" is available in Italy, in accordance with new rules in force with effect from March 31, 2007 replacing the former Naming Rules of 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 are challenged following the procedures set out in the Guidelines for the resolution of disputes in the ccTLD “it, Its purpose is to verify 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 those who challenge an ".it" domain name will select the expert (in case of a sole expert) or three experts (in case of a panel of experts) to whom the disputed registration is referred for decision pursuant to the ADR procedure.

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 ADR 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 official language of the procedure is Italian).

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

  1. 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.
  2. 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.
  3. 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:

  1. 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.
  2. 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.
  3. 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 facts, if proved, shall be considered as evidence of registration and use of the domain name in bad faith:

  1. Any circumstances which indicate the domain name has been registered for the main purpose of selling, transfering or licensing its use or otherwise to the complainant (who holds rights in the trademark or name) or one of his competitors, for a consideration, either money or other, exceeding the costs reasonably incurred by the respondent for registration and maintenance of the domain name.
  2. Any circumstances which indicate the domain name has been registered by the respondent in order to prevent the holder of an identical trademark from registering such domain name as his own, and in order to use it for activities which compete with the complainant's activities.
  3. Any circumstances tending to show the domain name has been registered by the respondent for the main purpose of damaging a competitor's business or usurping the complainant's name and surname.
  4. Any circumstances tending to show the domain name has been expressly used to attract Internet users for profit in a manner which has confused users into believing that the domain name is registered to or operated by the complainant, for example by the unauthorised use of the complainant's trademark.

The above list is not exhaustive, being only illustrative examples. The DRS provider may therefore consider other circumstances indicative of bad faith in the registration and use of the ccTLD ".it" domain name.

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.

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