Abstract
Registering a trademark confers exclusive rights to a sign used to distinguish goods or services, whereas registering a domain name secures the assignment of a specific Internet address. The availability of a domain name does not necessarily mean that it can be lawfully used without infringing third-party rights. Trademark and domain name registrations serve different purposes and therefore require separate legal assessments.
What rights are acquired through trademark and domain name registration?
A registered trademark constitutes a registered industrial property right. Registration is granted by the competent intellectual property authorities, such as the Italian Patent and Trademark Office (UIBM) for Italian trademarks or the European Union Intellectual Property Office (EUIPO) for European Union trademarks. An Italian trademark remains valid for ten years from the filing date and may be renewed for successive ten-year periods without limitation (Articles 15 and 16 of the Italian Industrial Property Code).
A domain name, by contrast, primarily serves as a technical identifier on the Internet. Registration is carried out through a Registrar, namely the service provider through which the applicant submits the registration request. The Registrar is distinct from the Registry, which administers the relevant top-level domain. Domain names are generally allocated on a first-come, first-served basis: the first applicant to submit a valid request is assigned the available domain name, subject to the applicable registration rules.
Domain name registrations are also subject to renewal requirements. For .it domain names, the registration period is one year, while the specific terms governing the service must also be examined in the agreement concluded with the Registrar.
A domain name used in the course of trade may nevertheless qualify for protection as an unregistered distinctive sign. Such protection depends on the fulfilment of the relevant statutory requirements and does not arise merely from the technical act of registration (Article 2(4) of the Italian Industrial Property Code).
These differences in the legal nature of trademarks and domain names are also reflected in the scope of their respective protection.
What are the limits of trademark and domain name protection?
Trademarks are registered in relation to specific goods or services, classified according to the Nice Classification. As a general rule, identical trademarks may coexist where they designate goods or services that are neither identical nor similar, without prejudice to the enhanced protection afforded to trademarks with a reputation.
Assessing a potential conflict therefore requires consideration of the goods and services actually concerned, rather than relying exclusively on the class numbers indicated in the registration.
Trademark protection is also territorially limited. An Italian trademark enjoys protection within Italy, whereas a European Union trademark has effect throughout the European Union. The Madrid System enables trademark owners to seek protection in designated countries or territories. An international trademark registration, however, does not automatically confer worldwide exclusive rights.
For domain names, uniqueness instead relates to the complete domain name, including its top-level domain. For example, name.it and name.com are distinct domain names and may be registered by different parties. Registration of the former does not automatically reserve the latter, nor does it prevent every potentially similar registration.
Furthermore, a website may be accessible from multiple countries even where its domain name uses a country-code top-level domain, such as .it. Such accessibility should not be confused with the territorial scope of legal protection: the ability to reach users abroad does not, in itself, establish worldwide exclusivity over the name.
Accordingly, the technical availability of a domain name must also be assessed in light of any pre-existing rights held by third parties in the same or a similar designation.
When can a trademark prevent the use of a domain name, and vice versa?
Under the principle of unity of distinctive signs, the use in the course of trade of a domain name that is identical or similar to another party’s trademark is prohibited where, having regard to the identity or similarity of the relevant activities, goods or services, there is a likelihood of confusion, including a likelihood of association (Article 22(1) of the Italian Industrial Property Code).
In the case of trademarks with a reputation, protection may extend to dissimilar sectors where the use of the domain name, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark (Article 22(2) of the Italian Industrial Property Code).
Conversely, an earlier domain name may constitute an obstacle to the registration of a subsequent trademark. This requires use of the domain name in the course of trade, a reputation extending beyond a merely local geographical area in Italy, and a likelihood of confusion arising from the similarity of the signs and the identity or similarity of the relevant activities, goods or services.
Prior technical registration of the domain name is not, in itself, sufficient to prevent the registration of a later trademark (Article 12(1)(b) of the Italian Industrial Property Code).
Where a conflict arises, the next step is to identify the appropriate legal or administrative mechanism through which the registration or use of the domain name may be challenged.
What remedies are available against abusive domain name registration?
The abusive registration of domain names corresponding or referring to third-party trademarks is commonly described as cybersquatting or domain grabbing. Such practices may be intended, for example, to resell the domain name to the trademark owner or to divert Internet traffic by exploiting confusion among users.
However, the mere correspondence between a domain name and a trademark does not automatically establish abusive registration.
The Italian Industrial Property Code provides that, upon application by the entitled party, a domain name registered in breach of Article 22, or applied for in bad faith, may be revoked or transferred (Article 118(6) of the Italian Industrial Property Code).
In interim proceedings, the court may also prohibit the unlawful use of the domain name in the course of trade and order its provisional transfer, potentially subject to the provision of security by the beneficiary (Article 133 of the Italian Industrial Property Code).
Alternative dispute resolution procedures are also available.
For .it domain names, the reassignment procedure must be preceded by the filing of an objection with the Registry and is administered by an accredited Dispute Resolution Service Provider (Prestatore del Servizio di Risoluzione extragiudiziale delle Dispute, or PSRD). These providers include the CRDD, which is therefore one of the bodies authorised to administer the procedure, rather than the name of the procedure itself. Filing an objection does not, in itself, result in the transfer of the domain name to the objecting party.
For generic top-level domains, such as .com, the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by ICANN, applies. To succeed, the complainant must establish that:
- The domain name is identical or confusingly similar to a trademark in which the complainant has rights.
- The registrant has no rights or legitimate interests in respect of the domain name.
- The domain name has been registered and is being used in bad faith.
The remedies available under the UDRP are limited to the cancellation or transfer of the domain name; the procedure does not provide for an award of damages.
For businesses, trademark registration and domain name registration therefore require distinct legal and technical assessments. Before investing in a website or commercial branding, a domain name availability check should be accompanied by a search for earlier trademarks and other pre-existing rights that could prevent the lawful use of the chosen designation.
Reviewed by: Arlo Canella
Publication date: 8 October 2026
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Margherita Manca
Avvocato presso lo Studio Legale Canella Camaiora, iscritta all’Ordine degli Avvocati di Milano, si occupa di diritto industriale.