Playboy court exposes differences between domain names and trademarks

Italy

Italy has not yet adopted legislation specifically governing domain names and their relation to trademarks and other distinctive signs. Therefore, the courts have played a major role in clarifying the law in this area. One notable example is the recently published decision of Playboy Enterprises Inc v Giannattasio, in which the Court of Naples ordered the transfer of 'playboy.it' to Playboy.

The facts and issues of the case were straightforward and the court easily came to the conclusion that Mario Giannattasio's registration of 'playboy.it' infringed Playboy's well-known PLAYBOY mark. However, in issuing its decision, the court took the opportunity to carry out a thorough analysis of the legal nature of domain names and to what extent Italian trademark legislation applies to conflicts between domain names and trademarks.

The court stated that domain names are distinctive signs used as a means of commercial communication and are directly governed by the Italian Trademark Act (ie, Royal Decree 929 of June 29 1929) and the rules governing unfair competition (ie, Article 2598 of the Italian Civil Code). However, it stressed that the facts that (i) the Internet has no territorial boundaries, and (ii) it is not possible to register identical domain names (even if the relevant websites refer to different classes of products or services), mean that certain rules that apply to trademarks cannot apply to domain names. The court specifically distinguished principles under the Trademark Act relating to territorial protection of trademarks and those allowing the co-existence of identical marks for different goods and services.

The court also stated that because certain characteristics of domain names differ from trademarks, the test to assess the likelihood of confusion between a mark and an interfering domain name is not the same as the test that applies to a conflict between trademarks. The court set out the following points that should be taken into consideration when assessing the likelihood of confusion:

  • Domain names can only consist of a combination of letters and, therefore, any comparison must relate to the domain name and the words making up the trademark (figurative elements cannot be taken into account).

  • The fact that a domain name has a top-level code is not sufficient to exclude the likelihood of confusion.

  • In spite of the fact that the confusion caused by a domain name that is identical or similar to a mark is initial interest confusion (ie, internet users will leave the website as soon as they realize they have reached the wrong location), this is not sufficient to reduce or exclude the risk of a likelihood of confusion. Initial interest confusion can cause an undue advantage to the infringer and prejudices the trademark owner.

Francesca Rolla, Lovells, Milan

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