Section 133 of the Italian Industrial Property Code has been recently amended. It now allows for a quick, if provisional, recovery of a domain name that is similar to a previously registered trademark or otherwise infringes the intellectual property of another party. The Czech company Avast, owner of the well-known trademark AVAST for a best-selling antivirus program, was among the first to take advantage of the new provision, and on July 31 - August 11, 2014 obtained an interim decision from the Court of Rome ordering the immediate transfer of the domain name avast.it to Avast, despite that the merits of the case have not yet been heard and may remain pending for several years.
The legal background of the decision is that, in Italy, domain names similar to, or identical with, a previously registered trademark may be recovered in two ways. The first is through mandatory arbitration proceedings (MAPs), similar to the ICANN UDRP proceedings commonly used for .com domain names. The second method is through the courts.
A domain name owner may interrupt a MAP at any time by filing a court case. Otherwise, after a decision has been rendered in a MAP, either party may contest the decision before the competent court, and – if the complainant had been successful in the MAP - filing this action would prevent the domain name from being transferred to the complainant.
When Italian courts intervene, the risk is that a decision will be delayed for several years. In the meantime, the original owner maintains possession of the domain name.
Section 133 has been amended precisely in order to take care of these delays. It allows the judge presiding over the domain name proceedings, either during interim proceedings or the case on the merits, to issue a provisional but immediately enforceable order transferring the domain name to the owner of the corresponding trademark. The latter may be required to post a bond, but gains immediate and full control of the domain name and may start using it.
In the Avast case, the Czech company first tolerated and then allowed its Italian distributor, a company known as Blufile, to register the domain name avast.it in Blufile’s name, with the provision that upon termination of the distribution agreement the domain name would be returned to Avast. Conflicts surrounding the distribution agreement and its termination led the Italian distributor to not return the domain name avast.it.
Avast started MAP proceedings against the former distributor before a single arbitrator, but did not succeed in obtaining an award ordering that the domain name avast.it be transferred to Avast. The arbitrator concluded that, even though Avast was likely correct, the case involved complicated questions regarding the distribution agreement that fell outside the MAP’s competence and, therefore, were best resolved in a court of law.
Dissatisfied with the award, Avast then filed an action before the Court of Rome, running the risk that the case may last for several years, and that, meanwhile, not only did Avast not control the domain name avast.it, but the former distributor was using it to promote the distribution of competing antivirus products.
Avast thus decided to take advantage of the amended Section 133 and asked the Court of Rome to order the immediate transfer of the domain name avast.it from Blufile to Avast. The interlocutory order was issued on July 31, 2014 and filed on August 11, 2014. It transferred the domain name avast.it to Avast without even requesting the Czech company to post a bond. The case on the substance of the matter may continue for some time, but thanks to the new version of Section 133 Avast will now be able to control and use avast.it immediately.
Not yet well-known, this updated provision is proving to be an important tool for parties that need to obtain quick recovery of their domain names in Italy. The Avast case confirms that it is not only a viable option, but an effective one.