How to compare UDRP with the .it national procedure

How to compare UDRP with the .it national procedure. UDRP and ccTLD domain recovery and defense across .it. Email the firm to assess your case.

A brand owner discovers that its Italian trademark is being exploited by a .it domain registered to a stranger demanding a significant sum to sell it back. The natural question is whether to compare UDRP with the .it national procedure — or whether the UDRP applies at all. The answer matters before a single filing fee is paid.

The UDRP does not apply to .it domains. Italy's country-code registry, the Registro.it, operates its own Reassignment procedure — a distinct administrative route with different eligibility rules, a different legal test, and different remedies from the UDRP's transfer-or-cancellation model. A complainant must understand both systems to choose correctly. The UDRP remains available only if the same registrant has also registered a confusingly similar gTLD (such as a .com). The Reassignment procedure is the governing route for .it domains specifically.

This page sets out the two systems side by side, explains where they diverge on the facts that matter most, and shows the realistic path for a brand owner or registrant facing a .it dispute.

What governs .it domain disputes — and why the UDRP does not apply directly

The UDRP was designed for gTLDs — .com, .net, .org, and other generic top-level domains operated by ICANN-accredited registrars. Italy's .it zone is a country-code top-level domain administered by the Istituto di Informatica e Telematica (IIT) of the National Research Council (CNR). Registro.it has not adopted the UDRP as its dispute-resolution mechanism. Instead, it operates a dedicated administrative procedure known as the Procedure for Reassignment of a Domain Name — commonly called the Reassignment procedure — under its own registry rules.

This distinction has a direct practical consequence. Filing a UDRP complaint at WIPO or the Forum over a .it domain will not result in a transfer order to that registrant. The filing simply will not be accepted as within the provider's jurisdiction. A brand owner must identify the correct forum before committing time and resources. In our practice, we regularly advise brand owners who assume the UDRP's global reach extends to national registries — it does not, and the cost of discovering that error mid-process is avoidable.

There is, however, an important scenario where both procedures run in parallel. If the same registrant holds both a .com (or other gTLD) and a .it version of a disputed name, the brand owner may pursue a UDRP complaint for the .com simultaneously with the Reassignment procedure for the .it. The two proceedings are independent, with different timelines and different evidence records. Coordination of the two is a real strategic consideration, not a formality.

How does the .it Reassignment procedure work — and what must a complainant prove?

The Reassignment procedure is a three-stage administrative process: an initial submission to the registry, followed by a mediation phase, and then — if the dispute is not resolved — an expert determination. The complainant files with Registro.it's designated dispute-resolution service provider and establishes the basis of its rights in the disputed name. The respondent receives notice and may oppose the claim. Where the matter proceeds to expert determination, a single or three-member expert panel issues a reasoned decision.

The legal test under the Reassignment procedure has structural similarities to the UDRP but diverges on several elements that frequently decide outcomes. The complainant must demonstrate: (1) that it holds rights in a name or sign — which can be a registered trademark, an unregistered mark, a company name, a trade name, or similar — that is identical or confusingly similar to the disputed domain; (2) that the registrant has no rights or legitimate interests in the domain; and (3) that the domain was registered or is being used in bad faith. That final element is critical. Unlike the UDRP, which requires the complainant to establish that the domain was both registered and used in bad faith (a cumulative test under Paragraph 4(a)(iii)), the .it procedure applies a disjunctive standard: registration or use in bad faith can each independently satisfy the requirement.

This "or" formulation substantially eases the burden in cases where a domain was registered in apparent bad faith but has since gone dark or passive. Under the UDRP, passive holding cases require a careful assembly of circumstantial evidence to satisfy the "and" test. Under the Reassignment procedure, evidence of bad-faith registration alone may suffice without a corresponding showing of abusive use. That difference is frequently determinative.

To assess which route applies to your .it dispute — or whether both the UDRP and the Reassignment procedure should run in parallel — contact info@cognomenlaw.com for a case assessment.

How does the UDRP differ from the .it procedure on key elements?

Placing the two systems side by side reveals differences that go beyond the bad-faith formulation. Each element of the test, the evidence standard, the eligibility to hold the domain, and the available remedies diverges in ways that affect strategy.

Rights in a name. The UDRP requires the complainant to hold trademark rights — registered or, under the consensus view, unregistered (common-law) rights evidenced by use. The .it procedure has a broader conception of protectable rights, accepting registered trademarks, unregistered signs with acquired distinctiveness, company names, trade names, and in some circumstances personal names. A party that could not satisfy the rights element under the UDRP may have a stronger footing under the .it procedure, and vice versa.

Eligibility to hold a .it domain. Registro.it imposes eligibility conditions on registrants. Broadly, natural persons must be residents of the European Union or European Economic Area, and legal entities must be established or have a presence there. A registrant who does not satisfy those conditions holds the domain in violation of registry rules — a factor that often reinforces a bad-faith or illegitimate-interest finding. The UDRP imposes no such geographic eligibility condition on complainants or registrants.

The bad-faith test: "and" versus "or." As noted above, the UDRP's Paragraph 4(a)(iii) is cumulative — registered and used. The .it procedure's disjunctive formulation is not a minor technical difference. It is the element that most often decides close cases. Complainants with strong registration-date evidence but weak evidence of ongoing use benefit materially from the .it formulation.

Remedies. Both procedures allow for transfer of the domain to the complainant. The .it procedure also allows for revocation — return of the domain to the registry pool — where transfer is not appropriate. The UDRP provides only transfer or cancellation (the equivalent of revocation). Neither procedure awards monetary damages. A complainant seeking compensation for lost revenue or harm caused by the domain must pursue judicial remedies, handled with local litigation counsel in the relevant jurisdiction.

Language. .it proceedings are conducted primarily in Italian. Evidence submitted in other languages may need to be translated. That is a practical cost and timeline factor that UDRP proceedings — which accept English as the default language where the parties agree — do not impose in the same way.

What evidence decides the outcome in a .it Reassignment case?

Evidence assembly for a Reassignment filing follows a similar logic to UDRP practice but must be calibrated to the Italian legal and procedural context. The complainant needs to demonstrate rights in the name, show the absence of any legitimate interest on the registrant's side, and establish bad faith under either the registration or the use limb.

For the rights element, the most straightforward evidence is a registered trademark in a class or classes relevant to the domain's apparent commercial use. Where the trademark is registered before the domain's registration date, the temporal relationship supports both the confusing-similarity finding and the inference of bad-faith registration. A trademark registered after the domain was registered does not defeat the claim automatically, but it does shift the evidentiary weight — the complainant must show that its rights in the underlying name predated the registration through use or reputation evidence.

On legitimate interests, the absence of any commercial presence, the lack of a bona fide offering of goods or services, and — importantly — a failure to satisfy Registro.it's eligibility conditions collectively support the finding. Where the registrant has made no demonstrable use of the domain for any purpose other than parking or blocking, the legitimate-interest element is typically straightforward. Panels have consistently held that passive holding does not itself constitute a legitimate interest.

On bad faith, the most common fact patterns are: registration shortly after the complainant's trademark becomes publicly known; a demand for payment exceeding the documented cost of registration; a pattern of similar registrations across other domains; and use of the domain to redirect traffic to competitors or to create confusion with the complainant's own site. In a recent matter (a .it domain, spring 2025), we assembled evidence of a five-figure buy-back demand combined with a series of similar registrations across Italian brands — the expert panel found bad-faith registration on the date of the domain's creation, without needing to rely on subsequent use evidence at all.

The respondent's counter-evidence typically takes one of three forms: evidence of rights in the name predating the complainant's mark; evidence of a bona fide business activity carried on under the name; or a challenge to the complainant's trademark rights themselves. Each counter-argument requires a specific evidentiary response. We have handled matters where a respondent successfully challenged the scope of a registered trademark to narrow the confusing-similarity finding — a strategy that can reduce a case to a genuine dispute rather than a straightforward win for the complainant.

Which route should you choose — and when should you file both?

The decision between routes is not always a choice. If the only disputed domain is a .it, the Reassignment procedure is the sole administrative option. If the contested name spans both gTLD and .it registrations under the same registrant, the question becomes whether to pursue both simultaneously, the UDRP first and .it second, or the .it first and UDRP second.

Pursuing both simultaneously preserves the time advantage: decisions come quickly and the registrant cannot use a settlement in one proceeding to moot the other. The practical challenge is coordinating two evidence records in different procedural settings, one primarily in English before a WIPO or Forum panel and one primarily in Italian before the Reassignment expert. Both require the same underlying evidence, but framed differently for each forum's legal test.

Filing the UDRP first makes sense where the .com is the commercially significant domain and the .it is secondary. A UDRP win transfers the .com quickly — typically within about two months of filing — and the .it can be pursued thereafter, often using the UDRP decision as background context (not as binding precedent, since the two procedures are independent, but as relevant factual material the .it expert may consider). Filing the .it first is rarely the better order unless the Italian market is the primary concern and the gTLD registration is a minor element.

What about the reverse scenario — a registrant defending a .it domain? The Reassignment procedure's respondent defense mirrors the UDRP's Paragraph 4(c) safe harbors in structure: demonstrating rights or legitimate interests, good-faith registration, and bona fide use before notice of the dispute. The .it procedure also recognizes an equivalent to reverse domain name hijacking — where a complaint is brought abusively against a legitimate registrant. A finding in the registrant's favor on those grounds carries reputational weight even though no financial penalty attaches. In our practice, we have defended registrants in both the UDRP and national ccTLD procedures and have obtained RDNH-equivalent findings where the complainant's conduct warranted it.

If a prior filing or response produced a bad outcome — whether in a UDRP or a national ccTLD proceeding — a focused second review can identify the element that was missed. Email info@cognomenlaw.com to discuss your position.

What are the practical cost and timeline differences between the two procedures?

On the UDRP side, the forum filing fee at WIPO starts at USD 1,500 for a single-member panel covering one to five domains, and at the Forum the entry point is approximately USD 1,300 for one to two domains. Legal fees for a straightforward single-domain UDRP complaint typically fall in the USD 3,000 – 7,000 range in the market, separate from the forum filing fee. A standard case resolves within about 45 – 60 days after commencement.

On the .it Reassignment side, the official fees charged by Registro.it's designated service provider are set by the registry's published tariff schedule. Those fees are modest by comparison to UDRP filing fees for most standard cases, but they vary with the complexity of the matter and should be confirmed with the registry directly, as tariffs are subject to revision. Legal preparation costs are comparable to UDRP work in scope, with the additional factor of Italian-language document preparation where the evidence includes materials originally produced in other languages.

Timeline for the Reassignment procedure varies. A straightforward uncontested matter can resolve within a comparable window to a UDRP case. A contested matter with a full expert determination typically takes longer, and mediation — where it occurs — adds a stage that does not exist in the standard UDRP path. Budget for a wider timeline window in .it proceedings than in a UDRP complaint, and confirm the current procedural timetable with Registro.it's rules directly, as publication timelines are updated periodically.

What does this mean for cross-border brand protection beyond .it?

The .it analysis illustrates a pattern that applies across European ccTLDs. Each national registry sets its own rules, its own eligibility conditions, and its own legal test. Some, like .eu, operate a formal ADR procedure through a designated provider. Others, like .de, have no equivalent of the UDRP at all — disputes over .de domains proceed through the German courts, with a DENIC DISPUTE entry available to block transfer during litigation. The Nominet DRS for .uk applies its own "abusive registration" test, notably using a disjunctive "registered or used abusively" formulation similar in that respect to the .it procedure, and includes a mandatory mediation stage before any expert decision.

A brand owner with presence in multiple European markets will typically face a patchwork of procedures rather than a single global process. The UDRP handles the gTLD portfolio. Each ccTLD requires a separate procedural assessment. For a portfolio with .it, .uk, .eu, and .de registrations all in dispute, four distinct procedures may be in play, each with different eligibility rules, different legal tests, and different filing costs. Coordinating those proceedings — particularly where the same registrant holds all four domains — requires a single strategic view across the portfolio, not four siloed filings.

In a recent multi-zone matter (autumn 2024), we coordinated a UDRP complaint at WIPO for the .com alongside a .it Reassignment filing and a Nominet DRS complaint for the .uk — all against the same registrant across approximately a dozen registered domains. The UDRP decision issued first and transferred the .com; the .it and .uk decisions followed within a matter of weeks. The coordinated record ensured consistency across the three evidence submissions without duplication of cost.

Related at COGNOMEN

• ccTLD Disputes — full service overview across all national zones
• Check ccTLD eligibility — country-code registration requirements explained
• FAQ — responding to a domain dispute within the filing deadline