The diligence of the provider in a case of “grabbing”.
Let’s examine a recent ruling by the Court of Rome which involved a provider in a “grabbing” issue. The issue relates to the hosting business that many providers carry out for their customers.
As part of this activity, providers allow customers to enter on the Internet a site with a domain name chosen (and registered) by the latter.
The ruling that we are going to examine would seem to impose on the provider a prior check on the domain name of the customers, using ordinary diligence in order to grasp the possible illegality of the domain name and prevent it from being used.
The fact dates back to March 1999. In a nutshell, a user of the I.net provider had put a site online under the domain www.ina.it.
The INA (National Insurance Institute) had subsequently referred the Court of Rome asking for the immediate prohibition of the use of this domain, as the Ina trademark had been registered since 1986 and in any case the name of the aforementioned company had always been given with the acronym Ina.
In the appeal, the National Insurance Institute claimed the violation of the trademark and competition provisions. In addition to the aforementioned request, INA also asked the Court to order the I.net provider to disconnect and prevent the user from using the domain www.ina.it.
Following the appeal, the user renounced the use of the “offending” domain, I.net instead resisted the question, arguing that any liability (for unfair competition or violation of trademark law), could be attributed to the user ( owner of the domain name) and not to the provider, who had limited himself to providing the connection to the network and on which there would be no obligation to check the content of pages entered on the site managed by the user.
The Court issued its decision arguing that the provider would not answer for the offenses committed without its knowledge (for example in the case of unlawful communications or information disseminated by third parties on the site and not subject to its control), it must instead answer for the unlawful act of others if illegal disclosures are provided. “… The opposite opinion would allow, for example, that the provider giving the link to those who expressly intend to open a site in order to carry out traffic of minors to go exempt from liability for shameful purposes or drug trade “.
By virtue of this principle, the Court of Rome believed that ordinary diligence should have allowed the unlawfulness of the use of a well-known trademark by a person not authorized for this purpose to be seized, at least in terms of unfair competition.
Therefore, both the user (who had registered the domain used) and I.net (in competition) were held responsible for the illegal act.
So far the sentence, let us now try to understand which principles must be taken into consideration.
By virtue of the ruling in question, the provider / maintener would have a duty to supervise domain names.
According to the Roman judges, the providers (which host third party sites) should always verify the correspondence of the domain name with a distinctive sign already registered or in any case known and, if this finding is positive, verify that the user who uses said name to domain is the legitimate owner of the distinctive sign.
If they do not carry out these operations and the domain corresponds to a registered trademark, they could be considered co-responsible for the offenses committed by the user.
The sentence immediately sparked several surprised reactions.
In fact, the control that would seem to be required by the Roman Court appears to be excessively onerous for the provider who only provides the hosting service to a user who already has his own domain registered.
However, the advice is to contractually regulate the matter, that is, it is advisable to include in the hosting contract a user declaration in which the user supports the full ownership of the domain name registered in compliance with the Italian legislation on trademarks and competition.