Domain names
“…a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose.”
This example, contained in the overview of WIPO Panel Views on Selected UDRP Questions (“Wipo Overview 2.0”) eloquently shows some of the many legal issues related to domain names.
Notwithstanding the challenging issues deriving from the interaction between domain names and trademarks at a national and global basis, it is also important to consider that generic and descriptive domain names (as called “premium domain names”) may be legitimately traded in the market, as they are indeed.
Premium domain names therefore consists in a very particular and important intangible assets, the management of which involves the knowledge of technical and (international) legal aspects. WebLegal presides over these aspects.
Roberto Manno serves as panelist for “.eu” and “.it” disputes resolutions. Many of the White List Team members are also fellows in the “.eu” dispute resolution center, the Czech Arbitration Court at the Czech Chamber of Commerce, in Prague.
Roberto Manno is author since 2003 of several articles on domain names as well as other Internet law matters (they are available in the “Interlex articles” section) and participated, as both attorney and panelist, in many national/international proceedings.
Click here to read the decisions.
Recent activities
UDRP – SONYLOTTERY.COM, SONY-PRIZE.COM , SONYPRIZE.COM – TYPOSQUATTING
On 12 October 2021 , acting as sole Panellist appointed by the Czech Arbitration Court, Roberto Manno ordered the transfer of the gTLD SONYLOTTERY.COM, SONY-PRIZE.COM , SONYPRIZE.COM to the legitimate owner of the well-known trademark, Sony Group Corporation. The Panellist accepted all Complainant’s argument that the disputed domain name was an “obvious” and “intentional misspelling of a…
ADR Center of the Czech Arbitration Court (CAC): AVAST-AVAST.COM
On 6 July 2020, acting as sole Panellist appointed by the Czech Arbitration Court, Roberto Manno ordered the transfer of the gTLD AVAST-AVAST.COM to the legitimate owner of the well-known trademark, Avast, one of the largest security software companies in the world, as it resolves in unauthorized and speculative use of earlier trademark rights. Read full…
WIPO CASE N. D2018-2286 “GIARDINIBLOG.COM” AND “GIARDINIBLOG.NET”. A CASE OF DOMAIN NAME THEFT
On December 20th, 2018 the sole Panelist Willem J. H. Leppnick, appointed by WIPO Arbitration and Mediation Center, ruled in favor of a domain name owner Stark S.r.l.s. (the Complainant) represented by WebLegal Studio Legale Associato, victim of a domain name theft in respect of “giardiniblog.com” and “giardiniblog.net”. The Respondent’s conduct can be assimilated to…
Recent UDRP decision transfers already URS suspended domain names
WebLegal’s founder Roberto Manno, appointed as the sole Panel in the UDRP before the Czech Arbitration Court, transferred several domain names to the French bank Boursorama (decision No. 102082). The disputed domain names had already been suspended within a Uniform Rapid Suspension proceeding before the National Arbitration Forum”.
COURT OF ROME CONFIRMED THE LEGITIMACY OF IDENTICAL DOMAIN NAME USED FOR SHARING COMMENTS ON A BLOG
On February 26th, 2018, “IS.I.A.MED.”, the Italian Institute for Asia and the Mediterranean, started a judicial proceeding (in Italian) before the Court of Rome aimed at ascertaining its earlier ownership of intellectual property rights on the mark as well as on the relevant domain name “www.isiamed.com”, based on an alleged lack of legitimacy on the…
Chinese translation of well-known trademarks amount to cyber-squatting
CAC case n. 101931 – nuohua.com In a recent decision before the Czech Arbitration Court, Novartis complained the registration and use of the Chinese (pinyin) transliteration of its well-known mark NOUHUA as .com domain name. Roberto Manno, acting as the sole Panelist, decided the domain name was registered and used in bad faith according to…
COURT OF ROME ON SMALLBIZ.IT: DOMAIN NAME DISPUTE RESOLUTION OVERTURNED
THE OWNER OF AN EARLIER TRADEMARK HAS NOT ANY RIGHT ON THE RELEVANT DOMAIN NAME IN CASE IT CONSISTS OF GENERIC TERMS COMPOSED BY COMMON USE WORDS. The Court of Rome, XVII Civil Division (dedicated to Enterprises) upheld the claim filed by the owner of the domain name “SMALLBIZ.IT”, assisted by Weblegal law-firm, in the…
Foodies.it: trading in generic domain names is a legitimate business activity.
WebLegal successfully represented domain owner in a dispute before the Italian Dispute Resolution Provider Tonucci & Partners. On 15 august 2017, the Panelist Avv. Emanuele Cammareri, appointed before the Disputed Resolution Provider Tonucci&Partners, ruled in favor of domain name trading as a legitimate business, dismissing the Complainant’s allegation of cybersquatting. The purely generic nature of the…
UDRP – ARCERLORMITTAL.COM – TYPOSQUATTING
On 3 July 2017 , acting as sole Panellist appointed by the Czech Arbitration Court, Roberto Manno ordered the transfer of the gTLD ARCERLORMITTAL.COM to the legitimate owner of the well-known trademark, ARCELORMITTAL. The Panellist accepted all Complainant’s argument that the disputed domain name was an “obvious” and “intentional misspelling of a trademark”. Such an use…
ADR.eu Decisione “CREDIT-AGRICOLE-L1.COM”
Nelle decisioni rese in data 2 maggio e 22 aprile 2017 relativamente alle procedure per la riassegnazione dei nomi a dominio “sediedesign.eu” e “CREDIT-AGRICOLE-L1.COM, CREDIT-AGRICOLE-L2.COM, CREDIT-AGRICOLE-L3.COM, CREDIT-AGRICOLE-L4.COM, CREDIT-AGRICOLE-L5.COM, CREDIT-GERICOLE-L6.COM”, l’arbitro Roberto Manno ha disposto nel primo caso il rigetto del ricorso per la mancanza di documentazione idonea a dimostrare la malafede nella registrazione e uso…