'luzern.ch' and 'montana.ch' transferred in landmark decisions
The Swiss Federal Supreme Court has issued two landmark decisions concerning the country-code top-level domain '.ch'. The court ruled that (i) the test for assessing the likelihood of confusion is based solely on the domain name and not the content of the website; and (ii) the courts have the power to order the transfer of domain names ending in '.ch'.
The first decision involved 'luzern.ch' (Case 4C.9/2002), which was registered by a private company. The city of Lucerne ('Luzern' in German) filed a lawsuit requesting the transfer of the domain name. The claim was successful at district and appellate court levels, so the defendant appealed to the Supreme Court.
The second decision involved 'montana.ch' (Case 4C.25/2002). The defendant in this case was a private school whose name included the word 'Montana'. Montana is also the name of a Swiss municipality. The municipality filed a lawsuit against the school for transfer of the domain name. Again, the claim was successful in the lower courts, so the defendant appealed to the Supreme Court.
The Supreme Court held in both cases that the name of a city or municipality is not within the public domain. These names fall under the protection conferred to public corporations under Article 29 of the Swiss Civil Code. The scope of protection is determined by the degree of notoriety of the public corporation's name. In both cases the court weighed the interests of the parties in the relevant disputed domain name. It reasoned that the defendants' prior registrations were not decisive and concluded that as the city of Lucerne and the municipality of Montana are better known to the public than the defendants, the former had greater rights to 'luzern.ch' and 'montana.ch', respectively.
The court also stated that the test for determining the likelihood of confusion caused by a domain name does not require the court to examine the content of the website - only the domain name is relevant. In the cases at hand, the public was likely to think that the domain names were associated with the city or municipality.
Finally, the court decided that if, as here, a protected name has been infringed, the courts have the power to order the transfer of the disputed domain name - not simply the cancellation of the defendant's registration.
Markus R Frick, Walder Wyss & Partners, Zurich
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