Swiss Supreme Court examines domain name jurisdiction issues

The Swiss Supreme Court has confirmed a first instance decision of the commercial court of the Canton of Zurich and has held that the Swiss courts have jurisdiction to rule on a trademark infringement case against an individual domiciled in London in the United Kingdom using Swiss insurance company SwissLife's trademarks SWISS LIFE and LA SUISSE in his domain names.

The defendant in the case at hand registered the domain names 'swiss-life.ch' and 'la-suisse.com'. Since (i) SwissLife is the owner of the trademarks SWISS LIFE and LA SUISSE, and (ii) the defendant was offering insurance services in competition to SwissLife on his websites, the commercial court had little difficulty in upholding the infringement claim. Therefore, the court ordered the transfer of the domain names. However, the case was then brought by the defendant to the Supreme Court, the main thrust of the appeal being that the Swiss courts were not competent.

The Supreme Court then had to decide whether Article 5(3) of the Lugano Convention was applicable - since the defendant was domiciled in the United Kingdom - and thus whether the Swiss courts could assert their jurisdiction in this case. Pursuant to this article, a person domiciled in a contracting state may be sued in another contracting state in matters relating to tort, delict or quasi-delict "in the courts for the place where the harmful event occurred". Referring to its previous jurisprudence, the Supreme Court held that infringement actions relating to IP rights, including trademarks, and acts of unfair competition, fell within Article 5(3).

However, the interpretation of the "place where the harmful event occurred" in relation to infringements caused by websites has remained unanswered. The Supreme Court noted that it is unclear under present doctrine as to whether the Swiss courts have jurisdiction over only websites aimed specifically at the Swiss public or any website accessible from Switzerland. The Supreme Court, however, sidestepped this issue, holding that in the case at hand the fact that the domain name incorporated the names Suisse and Swiss was sufficient to establish that the websites were aimed at Switzerland. It thus confirmed the first instance decision.

While there are no grounds to criticize this decision, it is, however, a great pity that the Supreme Court did not answer the question of whether every website accessible in Switzerland is subject to the jurisdiction of Swiss courts. Although such an interpretation would be a very effective measure to fight cybersquatting, it could, on the other hand, prove to be too broad since potentially any domain name owner could be sued in Switzerland even if the website was not aimed at or linked to Switzerland in any way. It is therefore unlikely that the courts will take this broader approach if and when the exact criteria of the test are formulated.

Marco Bundi, Meisser & Partners, Klosters