Italy: Pirate's Happy Days Are Over

Last Updated: 15 March 2001
Article by Guido Jacobacci

A Recent Italian Decision Against Domain Name Grabbing

In a decision of November 25, 2000, based upon a preliminary relief application, the Tribunal of Monza clarified a number of important principles concerning domain name grabbing.

The background facts were as follows:

The petitioner was a French company and the publisher of the world famous interiors magazine "ELLE DECOR" (in some countries published as "ELLE DECORATION"). It owned the trademark "ELLE DECOR" which was registered for printed matter. The defendant was an Italian company active in publishing and broadcasting which had registered the domain name, as well as the names of many other famous Italian newspapers and magazines. The petitioner claimed that the registration and the use of the domain name

infringed its trademark and constituted an act of unfair competition. It sought the immediate cessation of any use of this domain name and the cancellation of its registration.

Dissenting from other highly criticised decisions, the Tribunal of Monza held that a domain name is a distinctive sign of its owner and not only an alpha-numerical address. Therefore, the general principles of distinctive signs, in particular those laid down by trademark law, are applicable in disputes concerning domain names and other distinctive signs.

As to the claim of trademark infringement, the Tribunal first highlighted that, in order to establish the existence of an act of infringement in Internet-related matters, it was not the case that the risk of confusion was lower for a net surfer than for a member of the general public, as the net surfer – using a "sophisticated" instrument such as the Internet – would be more watchful.

The Tribunal then had to decide whether a site presented as "under construction" was sufficient evidence of the use of the domain name. Here, the Tribunal stated that the site could be considered as active and that, moreover, the evidence of the use of the domain name was reinforced by the presence of some hyperlinks in the site, which transferred the surfer to another site also owned and managed by the defendant.

For this reason, the Tribunal held that the Italian company made "use of the sign" of the petitioner as established by art. 1 of the Italian Trademark Law.

Whilst the Tribunal rejected the infringement claim based on the similarity of the respective goods and services (since it found no sufficient similarity between the printed magazines of the petitioner and the television services of the defendant), it held that there was a case for infringement given the well-known character of the trademark "ELLE DECOR" and availability of protection in respect of dissimilar goods and services, provided that there was a prejudice to the owner of the trademark being infringed or that the infringer was unduly taking advantage of the well-known mark.

In distinguishing between famous and well-known trademarks, the Tribunal defined the trademark "ELLE DECOR" as a well-known trademark by applying the principles laid down by the European Court of Justice in re General Motor Corporation vs. Yplon S.A. (C-375-97), which stated that a trademark can qualify as well-known when it is "known by a significant part of the public concerned with products or services which it covers". The Tribunal considered that the prejudice to the trademark owner in this case was represented by the diminishing of the "attractive power" of the "ELLE DECOR" mark and by a loss of the goodwill attached to it. The unfair advantage was attributable to the number of contacts obtained by the defendant’s main web site through the hyperlinks on the site

As to the claim for unfair competition, the Tribunal held in favour of the French company on the basis of allegations of behaviour contrary to fair professional practice by the defendant. Particular references were made to the so-called "Codice di Autodisciplina Pubblicitaria" (Italian Self-Regulating Code of Advertising Conduct), which specifically concerns the rules to be followed in advertising, as well as to recent case law on the same point.

The Tribunal observed that it is possible to extrapolate from article 13 of the above Code, the following principle of general application (i.e. not limited to advertising issues): It is contrary to fair professional practice to take advantage of the fame obtained by others and – in this case - to register as a domain name, a well-known trademark, paying low fees for its registration, in comparison with the huge investments made by the trademark owner.

In conclusion, this decision is part of the series of cases on Internet related-issues that support the theory that a domain name is undoubtedly a distinctive sign and that trademark law can be applied in a dispute involving a domain name and a trademark. Moreover - and this is the real novelty of this decision - the Tribunal of Monza has highlighted that using a domain name which is identical to a well-known trademark is a clear act of unfair competition, contrary to fair professional practice.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions