Alberto Furno, European Trademark Attorney and Luisa Curiale, Attorney at Law
Interpatent Srl -Turin

Domain name registrations have reached a number of about 228 million for generic top level domains and 134 million for national top level domains: calling it a crowded register is just an euphemism. Owners of trademarks are increasingly forced to sharpen their weapons for defending their own rights in the web world. Actions against those who register a domain name identical with one’s own registered trademark can be a means of prevention as well as of reaction, of defense. Here below we cite some of the “arrows” shot by well-known Italian companies that have hit the target with our Firm’s assistance.

Lauretana Spa, active in the field of mineral waters, had become aware of the registration of the domain name thanks to our domain name watch service. On the basis of the data obtained about its owner and of the use on the corresponding web site, containing a link with direct competitors in the field of mineral waters, it has been decided for an immediate action by means of a Reassignment Procedure according to the rules of the Uniform Domain Name Dispute Resolution Policy (UDRP): a preventive cease-and-desist letter, also due to the few certain data on its owner, would hardly have produced the desired results.

In compliance with the rules of the UDRP we have proved the identity between the domain name and the prior trademarks registered by Lauretana Spa. The procedure does not expressly require registered trademarks, however ownership of one or more registrations is a favorable condition for taking action. The prior registered trademarks for “LAURETANA”, among which those registered at the US Patent and Trademark office, at the WIPO of Geneva and at the OHIM of Alicante, have been fundamental for the launch and the positive result of the proceeding. We have further proved the absence of the registrant’s legitimate interest on the domain name and their bad faith. This latter, which is normally the more difficult aspect to be proved, has been easily shown thanks to the links redirecting to products in direct competition with the complainant. The desired goal has been achieved with success and in a few weeks’ time the challenged domain name was assigned to the company Lauretana.

Going from mineral waters to cheese, our watch service on third party’s domain names has revealed strategically precious also for another well-known company of the Italian food sector, Valgrana Spa. This latter had discovered that one of its distributors had registered a domain name identical with its own trademark “VALGRANA” with the national top level .nl. In this case it was decided to send a cease-and-desist letter, taking into account the business relationships existing between the two companies. The outcome was favourable and the domain name was transferred to Valgrana Spa. The numerous trademarks “VALGRANA” registered over the years have been decisive in this case, too.

Lauretana and Valgrana have therefore successfully obtained, by means of different actions, the assignment of the usurped domain names. However, the Reassignment Procedure or the cease-and-desist letter are just some of the actions available to trademark holders. The awareness of the potential risks existing on the web has increased and many companies decide to take preventive actions, by registering domain names identical with their own distinctive signs with the top level domains they consider the most appetizing also for potential cybersquatters.

Watch services and preventive registration appear to be allies, now absolutely necessary, also for domain names in particular in the current age of the new generation top level domains: through the Trademark Clearing House the registered trademark owner has the priority right to register domains identical with his sign and to be alerted in case of registrations by third parties. Among the new top level domains, we just mention some that are strictly close to the food and wine sector, as for example .food, .beer and .wine.

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