SOMMARIO:

1. Introduction - 2. Domain names disputes - 3. Case law - 4. E-commerce liability

1. Introduction

The Internet is a real-time palpitating digital space with a global dimension that contains a virtual image of our own physical world thus showing the same positive and negative slopes of the mans’ soul. Consequently, there are similar needs for regulatory intervention and surveillance of rights’ infringement and identical risks and opportunities. Nonetheless, the superiority of the technological tools involved produces more visibility of contents with a powerful and previously ignored reverberation effect and generalised consequences and impact. If, before the rising of the World Wide Web, the crossing of a relevant border (especially international border) had the potential of erasing previous perceptions and the most part of the phenomenon had only internal relevance, now the hiding effect emerging from the change of Country or State almost doesn’t exist. Presently, everything can be monitored on a global level (except, eventually, on the domain of the Dark Web). This means that, in our field – the trademarks – it is now easy to perform a thorough and quick search on the use and infringement (both intentional and unintentional) of any trademark. This can produce, at least, the following relevant effects: a) A more rigorous management and protection of the trademarks by its possessors; b) The need for the trademark owners to permanently monitor the Internet for the use of their marks under the risk of losing it if it is considered that the infringement was known or should have been known on a regular monitoring activity and no challenging occurred in due time; c) A potentially dramatic increase of litigiousness. This increment of contentiousness emerges, essentially, from a practice of cybersquatting that stands on the expectation of quick and easy profits and impunity, taking advantage from the fact that there is no control for grounds of refusal similar to the existent on the field of the trademarks. This occurs because, within the Internet community, it is cherished the uncomplicated registration of domain names is commonly considered as an effective means to induce business and boost the economic activity. The growing value of domain names on the Internet and the simplicity of the first-come-first-served nature of the registration system have a leverage effect on the cybersquatting phenomenon generating an enormous increase of the legal disputes standing on the allegation, [continua ..]

2. Domain names disputes

With the transference of the most relevant presence in the economic world from physical places – identified through the indication of door numbers, streets, cities, Countries, telephones and faxes – to digital addresses – web and email – or, by other words, to ‘domain names’, also the trademark infringement conflicts moved to the digital field, involving, regularly, the allegation of violation of such names. The domain names with a business relevance tend to be closely associated to a particular service or product and oriented to grant each time more important presence on the Internet that can immediately point out the trademark and the activity of its owner. The situation described creates a crossroad of two distinct and not always compatible realities. By one side we have the trademark that is obtained after the presentation of a registration application to a competent public authority that must evaluate the existence of absolute and relative grounds for refusal and several technical demands. By the other side, there is the domain name that is given after a request filed with a competent registrar – who sells his services to the public under a private initiative logic – that performs a lighter and less rigorous evaluation and attends to different interests. This process is ultimately controlled by the Internet Corporation for Assigned Names and Numbers (or “ICANN”) that is responsible for the technical coordination of the Internet global policy. The registrar manages the reservation of Internet domain names after being accredited by a generic top-level domain registry (gTLD) or a country code top-level domain registry (ccTLD) – see, as to the EU, the Regulation (EC) No 733/2002 of the European Parliament And of the Council of 22 April 2002 on the implementation of the eu Top Level Domain. Contrarily to the IP Registration authority that must observe a complex and extensive set of rules, the registrar performs its functions merely according to the guidelines of the designated domain name registries. The asymmetry of these two realities determines that, many times, a domain name containing a regular and legal trademark is already taken when an application for its granting is presented. This can be a strong point of conflict, even claiming for judicial intervention, whenever the trademark owner decides to struggle to get the domain name correspondent to his trademark. These domain [continua ..]

3. Case law

The EU case law has given an important contribution to clarifying the interests and concepts at stake. On this field, the judgment of the EUCJ of 11 July 2013 on the application of the EU Directives 84/450/EEC and 2006/114/EC and registration and use of a domain name – Case C-657/11, Belgian Electronic Sorting Technology NV v Bert Peelaers and Visys NV – declared that: a) The “registration of a domain name has the consequence of depriving competitors of the opportunity to register and use that domain name for their own sites”; b) “However, the mere registration of such a domain name does not in itself contain any advertising representation, but constitutes, at most, a restriction on the communication opportunities of that competitor, which may, where appropriate, be penalised under other legal provisions”; c) It “is not only by means of a website hosted under the domain name that that holder seeks to promote its products or its services but also by using a carefully chosen domain name, intended to encourage the greatest possible number of Internet users to visit that site and to take an interest in its offer”; d) Furthermore, “such use of a domain name, which makes reference to certain goods or services or to the trade name of a company, constitutes a form of representation that is made to potential consumers and suggests to them that they will find, under that name, a website relating to those goods or services, or relating to that company” e) “A domain name may, moreover, be composed, partially or entirely, of laudatory terms or be perceived, as such, as promoting the goods and service which that name refers to”. It deserves similar reference the EUCJ Case C-569/08, Internetportal und Marketing GmbH v Richard Schlicht, already mentioned, considering the scope and clearness of its findings. There, the EU Court decided that: a)  Bad faith circumstances indicated by law are not exhaustive – since it can be established by other circumstance other than those listed in Article 21(3)(a) to (e) of the Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top-Level Domain and the principles governing registration; b)  In order to assess whether there is conduct in bad faith, the national court must take into consideration all the [continua ..]

4. E-commerce liability