Swiss Federal Supreme Court Issues Two Landmark Decisions Concerning the Issue of Likelihood of Confusion With Respect to Domain Names Incorporating Names of Cities or Municipalities Without Their Consent

Profession:Walder Wyss & Partners
 
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Dr. Markus R. Frick, LL.M.

In July of this year, the Swiss Federal Supreme Court handed down the "luzern.ch" and the "montana.ch" decisions. Both decisions involve public corporations, a city in the former and a municipality in the latter case. The highest Swiss court decided - for the first time - the following controversial issues: a) the relevance of the content of a website for the likelihood of confusion caused by a domain name, and b) the question whether the plaintiff in a domain name action is entitled to a court order transferring the domain name to him based on his better rights.

Both decisions were decided by the same panel. The new decisions of the Swiss Supreme Court bring some stability to domain name disputes involving cities and municipalities having evolved only recently with public corporations launching their Internet presence.

The defendant in the "luzern.ch" decision, a private company, registered the domain name "luzern.ch" with the Swiss registry for the country-code top-level domain (ccTLD) "ch". When the city of Lucerne ("Luzern" in German) prepared its Internet presence it realized that the domain name "luzern.ch" was already in use by defendant. The city of Lucerne filed a lawsuit successfully requesting the transfer of the domain name in the first two instances (district and appellate court). Defendant then brought the issue before the Supreme Court.

The public corporation involved in the "montana.ch" decision was a municipality in the western part of Switzerland. The defendant was a private school with "Montana" as part of its name. The court had to decide the same issues as in "luzern.ch" with the difference that defendant did have a legitimate interest in its registered domain name. An additional issue here was the identity of the names of the parties in dispute about the domain name "montana.ch".

The Court held in both cases that the name of a city or municipality is not - as opposed to the designation of a region like "Bernese Oberland" - a geographic term in the public domain. The name of a public corporation is subject to name protection pursuant to article 29 of the Swiss Civil Code.

The scope of protection of the name of a public corporation is determined by the degree of notoriety. The better known the city the higher is the likelihood of confusion caused by the use of such name by an unauthorized third party. Chances are that the use of the name of a city or municipality as domain name will cause...

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