Italian court restores Mediaset's .com domain

The court agreed with Mediaset that its domain name had been acquired by a US company in bad faith

Italy's largest private broadcaster Thursday welcomed the decision of a Rome civil court to restore its right to use the mediaset.com international Internet domain after failing in a bid to recover it from the World Intellectual Property Organization (WIPO) in February.

The ninth section of Rome's civil court Wednesday accepted Mediaset's argument that the Delaware company Fenicius, and its owner, Didier Madiba, had acquired the domain in bad faith. The court ordered Fenicius to cease using the domain name or pay a €1,000 (US$1,300) fine for every day's delay in respecting the order.

The order did not appear to have been observed Thursday, with a beta version of the site still online under the warning: "This store is under construction. Any orders placed will not be honored." Madiba said he intended to use the website to sell "media sets" in his earlier response to Mediaset's WIPO appeal.

"Mediaset is our exclusive brand. We are glad that a judge has recognized that. We can't comment on the efficacy of the ruling, which is something that our legal offices will be following," Mediaset spokesman Angelo Santoro said Thursday.

Mediaset uses the Italian .it suffix for all its online activities but is concerned that it, and other major corporations, will have to devote significant resources to protecting brands from cybersquatters who take advantage of the introduction of new Internet suffixes to register deliberately confusing domain names.

"There are hundreds and hundreds of fake domains that the original copyright holders may have to register and protect," Mediaset said in a written statement released Wednesday. In a few cases, the disputes concerned genuine homonyms, but in the vast majority, the confusing domains were registered by professional speculators with the aim of reselling them to their legitimate owners at an exorbitant price, the company said.

The problem of cybersquatting has become "an authentic jungle that needs clearing out", Mediaset said. "The judicial road cannot be the answer: it requires financial and intellectual investments on the part of companies and contributes to the flooding of the civil justice system," the statement said.

"The problem is urgent and we want to draw the attention of the relevant authorities to it."

The Italian media corporation, owned by former Prime Minister Silvio Berlusconi, appears to have been slack in protecting its potentially important. com domain. Madiba reportedly bought the domain for just $10 at a Snapnames.com auction a year ago after Mediaset did not renew its registration.

The company had been through a similar experience in 2008, when Mediaset wrested back control of the domain from a Taiwanese company called Mustneed.com. On that occasion, Mediaset's "bad faith" argument was accepted by WIPO.

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Philip Willan

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