The spread of the internet has favoured the expansion of companies in the market, but also the increase of unlawful acts related to domain names which, due to their typicality, facilitate acts of unfair competition and counterfeiting.
It is in this “virtual” context that the company name, logo and domain name assume a central role in company policy, which must be supported and protected.
Unlawful acts related to domain names
For this reason, in order to protect against illegal and confusing practices related to third-party trademarks and domain names, you need to carry out the appropriate checks in accordance with the competition rules (art. 2598 of the Italian Civil Code), such as:
- verifying whether there is a likelihood of confusion between a domain name and a reputable trademark or name;
- assessing whether a subject using a certain domain name does not in fact have any right to it;
- proving the use of a domain name in bad faith.
If the offence is confirmed, the domain name registration can be cancelled.
But what are these unlawful acts?
1) Domain grabbing or cybersquatting
This is the most widespread form of unlawful behaviour. It entails the unlawful registration of a domain name corresponding to well-known distinctive signs of others, to the detriment of the trademark holder, in application:
- of the principle that identical domains cannot co-exist;
- of the “first come first served” rule, whereby the first to register a domain name takes precedence over subsequent third-party registrations, making its use legitimate.
The abuse diverts customers and is an act of unfair competition where a third party benefits from the fruits of the reputation of others.
This is a typical act of confusing unfair competition, deriving from the previous form of unlawful behaviours where a domain name similar to a well-known trademark is registered with a typo, in the hope that the distracted user will type the wrong URL with that specific typo.
A form of hyperlink that differs based on the linking technique, divided into various types:
- deep linking, a link that transfers users to an internal page of another website without going through the homepage of the linked domain name;
- surface linking, a link that refers to the homepage of a third-party domain name, therefore external to the starting domain name;
- framing, unlawful use of a link through a sort of “frame” within the starting website, where it is possible to click on a third-party domain name, generating an act of unfair competition.
Metatags are alphanumeric codes that describe the contents of a website’s pages to search engines using specific keywords.
The codes are not visible to users, but are subject to decoding by the same search engines in order to obtain a specific positioning of the website.
Counterfeit metatags of others’ trademarks use keywords to position the website referring to the counterfeit product and not to the original one on search engines
This may lead to a breach of competition with the aim of confusing users who think they’re on the website of the original product and instead are on that of the counterfeit product.
But how can a company defend itself against these unlawful acts?
How can you protect yourself from the crimes of unfair competition?
Certainly the increase in such acts of unfair competition disseminated on the web, together with the lack of reference legislation aimed at preventing their implementation, are an incentive for companies to be vigilant.
This means protecting yourself by implementing good practices and measures such as registering:
- a trademark that is both textual and figurative, in order to guarantee greater protection of the title against possible misuse by third parties;
- multiple domain names similar to your own, thus with the different extensions (.uk, .com, etc.) so that in the event of a crime using metatags, users will still be directed to the original website if they enter typos.