Recovering a domain name on the Internet

It is estimated that in 2020 the ‘com’ will no longer be the leader of the tld, i.e. the part that comes after the “dot” and that identifies a domain name. New .tld (.guru, .gratis, .luxury, etc.) are intended to replace all the old generic domains. Network users will try the products and services of interest being guided by what is written after the “point” rather than by what is written before it. This revolution has a considerable impact on the counterfeiting of trade marks. The same brand will live on the Internet with an identical mark used for goods or services altogether different, identified by specific tld, or by what comes after the dot. A domain such as pippo.luxury would not be confused with a domain such as pippo.consulting. For this reason it is important for brand owners to register new tld of interest and try to “block” or to retrieve them whenever possible. The trademark owners have at their disposal a number of important tools to protect their brand and also to prevent possible abuses. a) The TMCH, or the Trademark Clearinghouse. The TMCH is a service designed to encourage trademark owners and facilitate their position against those who wish to register new tld identical to their brand. The TMCH is a worldwide database in which those who have a registered mark may insert their own brand in order to be able to register new tld with priority and as they are activated. Another advantage of the TMCH is to “warn” those who wish to register a new tld that the name they chose is a registered trademark and therefore their registration could be challenged. The service has a very low cost and is extremely beneficial. b) The URS, or the Uniform Rapid Suspensions. URS are the procedures to be used when there is a clear violation of the trademark to block the site that is using your own brand. The URS allows to literally obscure the site of others quickly and at low cost in order to prevent the damage from spreading, and have the time to retrieve the domain name through a negotiation or using other legal processes. c) The UDRP, or the Uniform Dispute Resolution Policy. The UDRP is an administrative procedure with which you can recover a domain name without having to resort to a Tribunal. Fast and relatively inexpensive, especially when compared with the cost of a legal action, the UDRP can be used for very old tld and also for the new tld, and allows you to be able to recover a domain that is equal to your own brand, which has been registered in bad faith and for which the third registrant does not claim any rights. The UDRP has been active since 2000, is widely used and is continuing to grow due to the continuous increase of the “abusive” recordals. d) Recovery in court. When it is not possible to recover a domain name through administrative channels or when you want to get more results, such as the reimbursement of legal fees or the publication of the decision in a newspaper, you can resort to a Tribunal. These actions are more expensive but they are very fast and allow you to get more benefits. The Italian Industrial Property Code contains a provision that allows you to recover your Internet domain names as a precautionary measure, or within one or two months, and then you can, if necessary, continue the action to seek compensation for damages. These procedures should be introduced, together with internal strategies and organizational models that allow the company to prevent possible abuses. One example of this could be the agreements to be reached with distributors who must prevent the registration of domain names locally (.fr, .de, .cn, .ru, etc.) corresponding to the corporate brand. Distributors and retailers are often very clever and create serious difficulties to the legitimate trademark holders. (for more information: turini@turinigroup.com)