COURT OF ROME CONFIRMED THE LEGITIMACY OF IDENTICAL DOMAIN NAME USED FOR SHARING COMMENTS ON A BLOG

On February 26^th, 2018, “IS.I.A.MED.”, the Italian Institute for Asia and the Mediterranean, started a judicial proceeding (in Italian) before the Court of Rome aimed at ascertaining its earlier ownership of intellectual property rights on the mark as well as on the relevant domain name “www.isiamed.com”, based on an alleged lack of legitimacy on the aforesaid domain name.

The request for a precautionary injunction pursuant to article 700 of the Italian Code of Civil Procedure was based also on the alleged unfair use of the domain name “www.isiamed.com” by Mr. Aldo Prinzi, assisted by Weblegal Law Firm and Studio Legale Lisi, accused to have the sole purpose to discredit the image of “IS.I.A.MED.”.

With order (in Italian) dated April 17^th, 2018, the Court of Rome, XVII Civil Division, entirely rejected the Claimant’s requests, considering as not alleged neither proven any circumstance capable to cause an imminent and irreparable damage and to justify an urgent action (i.e. “periculum in mora”). In particular, the Court of Rome stated the legitimacy of Mr. Prinzi’s conduct and the absence of any defamatory nature of the documentation published on the Respondent’s website.

Against the aforesaid order, IS.I.A.MED., on last May 4^th, 2018, filed an appeal (reclamo) in order to (i) challenge the decision taken by the Court of Rome with the above-mentioned order, and (ii) prove the damages and prejudices deriving from Mr. Prinzi’s conduct, being such conduct detrimental to I.SI.A.MED. ‘s legal personal rights.

With a new order (in Italian)dated June 22^nd, 2018, the Panel of the Court of Rome totally rejected the appeal filed by I.SI.A.MED. (i) taking into consideration that I.SI.A.MED. changed the thema decidendum, by taking out the defamatory accuse and introducing new arguments (such as the damage to I.SI.A.MED.’s legal personal rights and, as a consequence thereof, (ii) considering such request as totally ungrounded.

As highlighted during the oral hearing held in Rome by avv. Manno and Sernia and avv. Lisi, I.SI.A.MED. has totally failed to prove the prejudices deriving from the conduct carried out by Mr. Prinzi, who has only collect the information on the web related to the financing granted to I.SI.A.MED. without any infringement of I.SI.A.MED.’s trademarks/intellectual property rights and legal personal rights.

The order taken by the Court of Rome is very important and innovative, being a pioneering case aimed at protecting the right to freedom of opinion and expression of a private citizen against the business interest of a certain enterprise. The new order also confirmed that the web could represent an effective means for the restoration of a balance between conflicting rights (private/public rights; individual/business rights).