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Italy - Mere Registration of a Domain Name Sufficient to Infringe a Trademark with a Reputation

In Laura Ashley Manufacturing BV v. Edizioni Blu Srl, the latter registered the domain name "lauraashley.com", as well as the names of numerous other well-known businesses, with Network Solutions, Inc. No Internet web sites were activated for any of the domain names registered.

In response to a letter from the Laura Ashley company, Edizioni offered to sell the "lauraashley.com" domain name for US$7,500. Thereafter, Laura Ashley commenced preliminary proceedings before the District Court of Parma, Italy, requesting, inter alia, an ex parte injunction prohibiting the use of the domain name, including the transfer of the domain name to a third party.

The court held that Edizioni's registration was unlawful and their offer to sell the "lauraashley.com" domain name constituted commercial use of the name and was therefore an infringement of Laura Ashley's trading name and registered trademark. The court also granted an ex parte injunction restraining Edizioni from transferring the domain name to a third party prior to the preliminary hearing.

During the preliminary hearing the defendants argued that the mere registration and offer to sell the domain name did not constitute sufficient commercial use of a trademark to constitute infringement. The court rejected this argument and affirmed the ex parte injunction order, holding that the name of a well-known company contained within a domain name constitutes a distinguishing mark, since it facilitates an on-line search of a web site and can therefore conflict with marks that are identical or similar. The court found that this case fell by analogy under Article 1 (c) of the Italian Trade Mark Law of 1992 which prohibits the use of marks identical or similar to a registered trade mark with a "reputation", "where such use of the sign…takes undue advantage of the distinctive character or reputation of the mark or causes prejudice to such distinctive character or reputation". The court held that the registration of the "lauraashley.com" domain name constituted unlawful use, since the defendants only registered it to sell it later, therefore attempting to take undue advantage of the Laura Ashley name. The court further held that, if Laura Ashley wished to set up an Internet web site under that name, the company would be forced first to buy the name from the defendants. In its ruling, the court referred to similar rulings issued by other European courts, particularly in Germany and the United Kingdom.

The defendants appealed the decision, but the Appeal Court rejected the appeal and ruled that the registration of a domain name with the intent to sell it, as previously recognized by German and United Kingdom courts, constitutes a form of unjust gain from or unlawful advantage of the reputation acquired by Laura Ashley. The defendants knew of Laura Ashley's rights in the name and their registration of the domain name for economic gain prevented Laura Ashley from obtaining the domain name.

This case is important since it is the first time that an Italian court decided whether the registration of a third party's trademark as a domain name constituted trademark infringement under Italian Law. This case also brought Italy in line with other courts in Europe which have held that "hijacking" a domain name offends national trademark laws.


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