MFSD’s FAQ

to the Italian Domain Names Dispute Resolution Policy
The most frequently asked questions about domain name dispute resolution under the Italian Rules for Assignement (the Rules) and administration of disputes by MFSD under the Rules are answered in this FAQ.
The Rules applies to the “.it” name country code Top Level Domain that have adopted it on a voluntary basis: the Registration Agreement
Specific questions that are not addressed in this FAQ, may be submitted by e-mail to responsabile@mfsd.it about domain name dispute resolution under the Rules is also available at the web site of the Italian Registry (the Registry) (www.nic.it)
A. SCOPE OF ADMINISTRATIVE PROCEEDING

What are MFSD’s Supplemental Rules?

The Rules sets out the legal framework for the resolution of disputes between a domain name registrant and a third party (i.e., a party other than the registrar) over the abusive registration and use of an Internet domain name in the cc.TLD “.it”, and the Riassegment Rules that have adopted the Rules on a voluntary basis. On the 5 January 1996, the Registry adopted a set of Rules. Any person or entity wishing to register a domain name in the “.it” TLD is required to consent to the terms and conditions of the Rules.
On the 07.19.01, the Registry adopted a set of Rules and Riassignement Rules setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure is administered by dispute resolution service providers accredited by the Registry. MFSD is such a dispute resolution service provider, accredited by Registry since september 15, 2001.
MFSD has developed Supplement Rules which supplement the Rules.

• Who can use the Riassegnment Administrative Proceeding (the Procedure)?
 
Any person or company, with their habitual residence and/or domicile or registered office in the European Union can file a domain name Complaint concerning a “.it” domain name using the Procedure.

• What types of disputes are covered by the Procedure ?

According to the Paragraph 16 of the Rules, the Procedure is only available for disputes concerning an alleged abusive registration of a domain name; that is, which meet the following criteria:
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a personal name and/or company name and/or trademark and/or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith

• What circumstances are evidence that a domain name has been registered and is being used in bad faith ?

Paragraph 16.6 of the Rules sets out the following examples of circumstances that will be considered by an Administrative Panel (the Panel) to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complaint who is the owner of the personal name, company name, trademark or service mark or to a competitor of that complaint, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the personal name, company name, trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor or of taking the name and surname of complaint; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complaint’s mark (i.e. as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location).
The above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.

• What are the advantages of the Procedure ?

The main advantage of the Procedure is that it typically provides a faster and cheaper way to resolve a dispute regarding the registration and use of an Internet domain name than going to Court. In addition, the procedures are considerably more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international and European Union law in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complaint are located.

• If I use the Procedure, can I still go to Court ?

Yes. Paragraph 16.2 of the Rules provides that the Procedure requirement shall not prevent either the domain name registrant (Respondent) or the third party (Complainant) from submitting the dispute to a court of competent jurisdiction for resolution. It is possible for a party to start a lawsuit in Court before an administrative proceeding is commenced. A party can also commence a lawsuit after the administrative proceeding is concluded if it is not satisfied with the outcome.

• Can I use the Procedure to bring a case against the registrar with which I have registered the domain name ?

No. The Procedure is only available to resolve disputes between a third party alleging an abusive registration of a domain name (see above) and the domain name registrant.

• Can I, as a domain name holder, use the Procedure to bring a case against someone who has threatened to sue me and take away my domain name ?

No. The Procedure is only available to resolve disputes brought or commenced by a third party alleging an abusive registration of a domain name (see above) against a domain name registrant.

B. OVERVIEW OF THE PROCEDURE

• What are the various stages in the Procedure ?

The six basic stages in a Procedure are:
(1) The filing of a Letter in which the complaint asks to the Registry to put on the database named “Whois” the expression “Challenged Value”. The complaint must start such procedure within six (6) months.
(2) The filing of a Complaint with a Registry-accredited dispute resolution service provider chosen by the Complaint, such as MFSD;
(3) The filing of a Response by the person or entity against whom the Complaint was made;
(4) The appointment by the chosen dispute resolution service provider of a Panel of one or three persons who will decide the dispute;
(5) The issuance of the Panel’s decision and the notification of all relevant parties; and
(6) The implementation of the Panel’s decision by the Registry and the registrar(s) concerned should there be a decision that the domain name(s) in question be cancelled or transferred.
A more detailed description of the Procedure is available on web site: www.nic.it.

• How long does Procedure take ?

The Procedure normally should be completed within 40-45 days from the date MFSD receives the Complaint.

• How much does Procedure cost ?

For a case filed with MFSD involving one (1) domain name that is to be decided by a single Panelist, the fee is € 1.188,00. For a case that is to be decided by three (3) Panelists, the fee is € 2.006,00.
For a case involving other domain names, for each domain name that is to be decided by a single Panelist, the fee is € 517,00, and € 1.550,00, for a case that is to be decided by 3 Panelists. The costs are without VAT.
The Complaint is responsible for paying the total fees.
The fees described above do not include any payments that might have to be made to a lawyer representing a party in the Procedure.
Please consult the MFSD’s Schedule of fees for further details.

• Is the Procedure confidential ?

No. All decisions are published in Registry’s and MFSD’s web sites.

• In what language is the Procedure conducted ?

According to the Paragraph 11 of the Reassignment Rules, the Procedure’s language is the Italian. Panel can decide, in order to the circumstances of the single procedure and upon request of one of the parties, of conducting proceeding in an other language. In any case, MFSD guarantees a translation’s legal service, namely in all 20 European Union languages.

• Are in-person hearings required in the Procedure ?

Paragraph 13 of the Reassignment Rules makes it very clear that there shall be no in-person hearings (including hearings by phone, video or web conference), unless the Panel determines, only as an exceptional matter, that a hearing is necessary in order for it to make its decision.

C. PREPARING AND FILLING A COMPLAINT

• To which dispute resolution service provider do I submit my Complaint ?

The Complaint may be submitted to any accredited dispute resolution service provider. For the TLD “.it” these providers are accredited by Registry. They are accredited by the administration of the TLD “.it”.
MFSD is an Italian independent company acting, according to the European Commission Recommendation of the 04.04.2001 “on the principles for out-of-court bodies involved in the consensual resolution of consumer disputes”, as Alternative Dispute Resolution Provider on Intellectual Property matters, accredited by Registry too. MFSD focuses its practice on a local action and an international perspective, offers a comprehensive, full service Intellectual Property and Computer Law and Internet matters. MFSD has a specialist knowledge in Intellectual Property and considerable experience in dispute resolution administration generally. MFSD is actually collaborating with Domestic Official Public Entities, International Official No-Profit Entities, Local Bar Association and Law Firms to promote and establish an administrative framework for domain name and Internet, civil and commercial law alternative dispute resolution (ADR), on line (ODR) and face-to-face. MFSD attends with interest also the important public discussion opening by European Union Commission with the Green Paper on “civil and commercial law’s alternative dispute resolution methods” to implement ADR in the civil justice system of each European country.

• Is there a standard form in which a Complaint should be submitted ?

While there is no standard Rules form, MFSD has prepared a model Complaint and filing guidelines which parties may wish to consult. This model has been prepared by MFSD and is intended to serve as a guide for filing a Complaint under Rules. Its use as a basis for the preparation of a party’s Complaint does not preclude the possibility of that complaint being found deficient following MFSD formalities compliance review. Nor does reliance on the model guarantee a complaint’s success on the merits.

• How do I submit a Complaint ?

Under the Rules Complaints must be submitted in hardcopy and in electronic format.
In order to facilitate electronic filing MFSD offers the following options:
o complete and submit directly online to MFSD an electronic form of the model Complaint; or
o download and complete the model Complaint as a Word document to submit as an e-mail attachment to responsabile @mfsd.it.
The hardcopies including all annexes should be sent by express courier to:
MFSD
Via Cosimo del Fante, 12
20122 – Milan (Italy)
Please consult the comments for filing on complaint or response for further information.

• In what language should the Complaint be made ?

According to the Paragraph 11 of Riassegment Rules, the language of Procedure is the Italian language. It’s the Panelists’s faculty to decide to handle the Procedure with another language, on the basis on particular conditions requested by each Procedure or upon the party’s request. The Panel can order that the documents, which are not submitted by the parties in Italian language, must be translated in full or partial Italian language.
MFSD is able to offer a multi-language (namely in all 20 European Union languages) translation’s legal service, under payment. The estimate is available upon request.
Does the Complaint have to be prepared and submitted by a lawyer ?
No. While the assistance of a lawyer may be helpful, there is no requirement that the Complaint be prepared or submitted by a lawyer.

• What information should be included in the Complaint ?

The information that must be included in the Complaint is described in the Paragraph 16.6 of the Rules.

• Does the Complaint have to be certified or notarized ?

No. However, an original version signed by the Complaint or the Complaint’s authorized representative must be submitted to MFSD.

• Do any payments have to be made when filing the Complaint ?

Yes. The appropriate fee specified in the MFSD’s Schedule of Fees must be submitted together with the Complaint, using one of the methods described in Supplemental Rules.

• Which contact details should be used when sending the Complaint to the Respondent what communication methods should be used ?

At the time of submitting the Complaint to a dispute resolution service provider, the Riassegment Rules, the Paragraph 2, requires a courtesy copy of the Complaint to be sent to the Respondent. For this purpose, unless the Respondent has indicated the method and contact details to be used for case-related communications, the Complaint may be sent by fax (with a confirmation of transmission) or postal or courier service (postage pre-paid and return receipt requested) or electronically via the Internet (provided that a record of transmission is available).
Where can I get information about who is the registrant of a domain name?
Certain registration information can be obtained for domain names registered under geographical Top Level Domain “.it”, by conducting a database Whois search at ww.nic.it.

D. PREPARING AND FILING A RESPONSE

• Is the filing of a Response mandatory ?

No, but under the terms of the registration agreement (called “Lettera di Assunzione di Responsabilità”) and according to the Paragraph 13.1. of the Rules, the registrant accepts the Procedure.

• How many days does a Respondent have to file a Response ?

According to the Paragraph 5 of the Reassignment Rules, the Respondent must file its Response within 25 days from the commencement of the Procedure. Response must be submitted in hardcopy and in electronic format.
What happens if a Response is not filed or not filed on time ?
If the Respondent does not file its Response by the deadline specified by MFSD, the Respondent will be considered in default. Despite the Respondent’s default, MFSD will proceed to appoint the Panel. The Panel will be informed of the Respondent’s default. It will decide the dispute based on the information available to it and may draw such inferences as it deems appropriate from the Respondent’s failure to submit a timely Response.

• Is there a standard form in which a Response should be submitted ?

In addition to a Model Form of Response, MFSD has prepared Response Filing Guidelines which parties may wish to consult for guidance and which provides filing guidelines. The use of the Model Form of Response and Filing Guidelines as a basis for the preparation of a party’s response does not guarantee a respondent’s success on the merits.

• When submitting a Response electronically, what format should be used ?

The electronic version of the text of a Response should preferably be submitted as an attachment to an e-mail in one of the following formats: Word document, PDF file, text file, RTF file. If in doubt, please contact MFSD.

• In what language should the Response be made ?

Unless the Panel can decide otherwise or Complaint and the Respondent request to the Panel, the Response must be in Italian language. Any attachments not in such language should also be accompanied by an translation in Italian language. If they are not, the Panel can order that they be translated in full or in part at the cost of the submitting party.
MFSD is able to offer a multi-language (namely in all 20 European Union languages) translation’s legal service, under payment. The estimate is available upon request.

• Does the Response have to be submitted by a lawyer ?

No. While the assistance of a lawyer may be helpful, there is no requirement that the Response be prepared or submitted by a lawyer.

• What information should be included in the Response ?

The information that must be included in the Response is described in the Paragraph 16.6 of the Rules and the Paragraph 5 of the Riassegment Rules. In addition, MFSD has prepared a Model Form of Respone and Response Filing Guidelines which serves as a checklist of the elements to include in the Response and provides filing guidelines.

• In preparing my Response, how do I demonstrate my rights to and legitimate interests in the domain name that is the subject of the Complaint ?

Paragraph 16.6 of the Rules states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the domain name registrant’s rights or legitimate interests to the domain name:
(i) before any notice to the domain name registrant of the dispute, the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has registered no trademark; or
(iii) the domain name registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

• Does the Response have to be certified or notarized ?

No. However, an original version signed by the Respondent or the Respondent’s authorized representative must be submitted to MFSD.

• Do any fees have to be paid when filing a Response ?

No. Never.

• How does one submit a Response to MFSD and what are the correct contact details ?

Under the Reassignment Rules a Response must be submitted electronically and in hardcopy.
If the Response is being submitted to MFSD by e-mail, for the purposes of satisfying the electronic filing requirement, it should be sent to responsabile@mfsd.it.
The hardcopies should be sent by express courrier to:
MFSD
Via Cosimo del Fante, 12
20122 – Milan (Italy)

• Which contact details should be used when sending the Response to the Complaint and what communication methods should be used ?

The Response should be sent to the Complaint to the contact details and by the methods specified in the Complaint.

• Does the Response have to be sent to the Italian Registry ?

No. According to the Paragraph 4 of the Rules, the Response can sent only to MFSD.

E. THE ROLE OF THE PANEL

• What is a Panel ?

A Panel is composed of one or three independent and impartial persons appointed by MFSD that is selected to administer the dispute according to the Rules, Reassignment Rules and Supplement Rules.
Who are the Panelists ?
The persons appearing on the MFSD’s list of Domain Name Panelists have been selected on the basis of their well-established reputations for their impartiality, sound judgement and experience as decision-makers, as well as their substantive experience in the areas of international trademark law, electronic commerce and Internet-related issues. The MFSD’s list is consisting of Panelists, located in all over the Italian territory, from Italy and others European Union countries, many of whom are multi-lingual.

• When is the Panel appointed ?

According to the article 9 of Supplemental Rules, if the Complainant request that the appointment of a single Panelist, MFSD appoint the Panelist and inform him about his appointment.

If the Complainant request the appointment of three Panelists, MFSD appoints – as possible – one Panelist between three Panelists indicated by Complaint, one Panelist one Panelist between three Panelists indicated by Respondent. The third Panelist, appointed by MFSD, is automatically the President of the Administrative Panel, according time and terms which follows.

• How is a Panel appointed ?

A Panel is appointed by MFSD as follows:
(i) If both the Complaint and Respondent don’t indicate that they would like the dispute to be decided by a single Panelist, the Panelist will be appointed by MFSD from its list of Domain Name Panelists;
(ii) If the Complaint designates three Panelists and the Respondent designates one Panelist, or vice-versa, then MFSD will appoint a three-person Administrative Panel. In so doing, MFSD will try to appoint one of the candidates nominated by the Complaint and one of the candidates nominated by the Respondent. If it is unable to do so, MFSD will make an appropriate appointment from its list of Domain Name Panelists. The third Panelist, or Presiding Panelist, will be appointed on the basis of preferences indicated by the parties from among a list of five candidates that will have been provided to them by MFSD (the fees are paid by the Complainant).

F. THE PANEL’S DECISION

• What decisions can the Panel take ?

Only two types of decisions can be made by the Panel:
(i) Decide in favor of the person or entity that filed the Complaint and order that the disputed domain name(s) be transferred to that person or entity; or
(ii) Decide in favor of the person or entity that filed the Response and order that the disputed domain name(s) resting in hold of the Respondent.

• Can the Panel decide about any monetary amounts?

No. The Panel cannot decide about money judgments nor lawyers’ costs.
How long does it take to get a decision ?
Absent exceptional circumstances, the Panel’s decision will be notified to all relevant parties within 15 days from the appointment of the Panel.

• Is it possible to challenge a Panel’s decision ?

Yes. Paragraph 16.11 of the Rules allows a domain name registrant that loses in the Procedure to challenge the Panel’s decision by filing a lawsuit in certain Courts. As noted above, the concerned registrar(s) will implement the Panel’s decision 15 business days after it receives notification of the decision from the dispute resolution service provider, (such as a copy of a complaint, file-stamped by the clerk of the Court) that the registrant has commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under the Paragraph 16.11 of the Rules. The registrant must be offer to the Registry a copy of a claim duty notified: a) within 10 business days if the Complainant is resident and/or domicile or has its registered office in Italy; b) within 30 business days if the lawsuite (and the concerned acts) must be institue from or to other Countries.

• Are the Panel’s decisions available to the public ?

Yes. According to the Paragraph 16.10 of the Rules, except where a Panel decides otherwise in exceptional circumstances, a dispute resolution service provider is required to publish all decisions in full on the Internet. MFSD has established a web site where MFSD Panel’s decisions can be accessed.

• What happens if the parties come to an agreement over their dispute during the Procedure ?

If the parties come to an agreement concerning their dispute (i.e., a "settlement"), then Paragraph 14.4 and 14.5 of the Rules requires the Procedure to be terminated.

G. THE ROLE OF THE REGISTRY

• What is the Registry’s role in the Procedure ?

Except as described below, the Registry does not and will not participate in the administration or conduct of the Procedure. MFSD has prepared a flowchart (word or pdf) illustrating the interactions between MFSD and the Registry in the course of a case.
The Registry’s role in the Procedure is as follows:
(i) To provide requested information to MFSD, including confirming that the disputed domain name is registered with it, that it is registered by the person or entity identified as the Respondent in the Complaint, providing the Respondent’s contact details and, when necessary, the registration agreement and associated documents;
(ii) To prevent the transfer of a domain name registration after a Procedure has commenced; and
(iii) To implement the Panel’s decision.

H. THE ROLE OF MFSD

• What is the role of MFSD in a Procedure ?

The MFSD’s role is to administer the Procedure, which includes verifying that the Complaint satisfies the formal requirements of the Rules and Reassignment Rules and MFSD Supplemental Rules, co-ordinating with the Registry to verify that the named Respondent is the actual registrant of the domain name(s) in issue, checking the Respondent’s contact details, notifying the Complaint to the Respondent, sending out case-related notifications, appointing the Panel and otherwise ensuring that the administrative proceeding runs smoothly and expeditiously.
MFSD is independent and impartial. It does not decide the dispute between the parties. As an administrative body, it can provide guidance on the procedural aspects of the Rules and Reassignment Rules and MFSD Supplemental Rules, but cannot give any views about the strengths and weaknesses of a party’s case.

• What is a Case Administrator ?

The Case Administrator is a MFSD official principally responsible for managing the case procedures, including all administrative matters relating to the dispute and communications with the Administrative Panel and Registry. The Case Administrator may provide administrative assistance to the Panel or a Panelist, but has no authority to decide or influence matters of a substantive nature concerning the dispute.
At MFSD, the Case Administrator and his staff have legal backgrounds, speak Italian, Spanish, English, French and German and are experienced in dispute resolution and domain name, and in general in Intellectual Property and Internet issues.

• What is the Formalities Compliance Review ?

The Formalities Compliance Review is a check by MFSD of the Complaint to ensure that it satisfies all of the formal requirements set out in the Rules and Riassegment Rules and MFSD Supplemental Rules.

I. FEES

• What are the MFSD’s fees for a domain name dispute ?

For a case filed with MFSD involving 1 domain name that is to be decided by a single Panelist, the fee is € 1.188,00. For a case that is to be decided by 3 Panelists, the fee is € 2.006,00.
For a case involving other domain names, for each domain name that is to be decided by a single Panelist, the fee is € 517,00, and € 1.550,00, for a case that is to be decided by 3 Panelists.
The costs are without VAT.
It is the parties that decide whether the case is to proceed before 1 or 3 Panelists.
The Complaint is responsible for paying the total fees.
The fees described above do not include any payments that might have to be made to a lawyer representing a party in the Procedure.
Please consult the MFSD’s Schedule of fees for further details.
Can I collecte Procedure’s fees and lawyer’s costs ?
Yes. The party that has obtained the favorable decision can bring a cheaper and faster civil action against the other party before Giudice di Pace (Italian Justice of Peace) for Procedure’s fees and lawyer’s costs collecting.

For further informations please contact:
Telephone +39 0258302250
Facsimile +39 0258325397
E-mail: responsabile@mfsd.it
Contact person: Mr. Marco Serra
or visit the web site: www.mfsd.it

NOTICE: we are providing this FAQ as a brief informations on current .it domain names administrative proceeding, and it should not be considered legal advice, which depends on the facts of each situation. Receipt of this FAQ does not establish a provider-user relationship.