The Court of Rome issued an important decision on cybersquatting and on the scope of protection provided by well-known trade marks, also recalling the main principles on the subject of bad faith registration.

The background

Back in 2018, a Cypriot company specialized in the purchase and resale of generic domain names registered the domain “corny.it”. The problem? A food company had registered and used the “Corny” trade mark for its energy bars since 1990 - nearly three decades earlier. The domain was not used for anything meaningful: just pay-per-click advertising and a “for sale” sign.

The trade mark owner fought back, and in March 2021, Italy’s Domain Dispute Resolution Center (“CRDD”) ordered the domain transferred to the rightful brand owner. But the Cypriot company was not done. It took the case to the Court of Rome, arguing it had every right to register and use the domain name “corny.it”. 

The legal principles

In its October 2025 decision, the Court sided firmly with the energy bar maker. Not only did it confirm the domain transfer, but it also banned the Cypriot company from using “Corny” or anything similar as a domain name. The judges relied on three key legal principles.

1. Unity of distinctive signs: if you own a trade mark, you can stop others from using identical or similar signs - even as domain names.
2. Extra-product protection for “well-known trade marks” (Article 22, Italian IP Code): when a sign is well-known, its owner can block the relevant use even for completely different products or services, where such use could lead to an undue advantage or may result in a risk to the distinctiveness of that trade mark. The trade mark does not need to be universally famous - just recognized by a significant portion of the relevant audience.
3. Prohibition of bad faith registration (see reference below) (Article 19, paragraph 2, Italian IP Code): you cannot register a sign if the purpose of such registration is to harm third-party rights.

The decision

The Court of Rome found the “Corny” trade mark qualified as a well-known trade mark, as the defendant had proven its popularity “among a significant portion of the public interested in the products or services marked”, in particular by demonstrating substantial advertising investments and a widespread availability in major national supermarkets and online retailers.

As for bad faith, the judges concluded the domain was registered specifically to pressure the trade mark owner into buying it back - the textbook definition of cybersquatting.

Quite interestingly, the Court went further, issuing an injunction with penalties for future violations and ordering the Cypriot company to pay damages covering both lost profits and the costs of fighting the infringement.

The takeaway

Italian Courts are getting tougher on domain name speculation. If you are the owner of a well-known trade mark and a counterparty has performed cybersquatting activities, the legal opportunities to have the domain name rightfully transferred and recover damages are growing fast.