New Venue To Block '.Com' Domain Names Selling Counterfeits?

Author:Frédéric Serra Esq and Melina Haralabopoulos
Profession:Froriep
 
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In what is thought to be a first Swiss ruling of its kind, the Geneva Court of Justice recently ordered a major US based registrar of ".com" domain names to place on registry-hold multiple ".com" domain names selling counterfeit goods (ACJC/335/2015). This innovative precedent gives Swiss trademark owners a new venue to block third parties' websites infringing their trademark rights worldwide.

The Claimant, a company active in the luxury goods industry, requested from the Geneva Court interim measures against six domain name holders based on an infringement of the Swiss Trademark Protection Act. All of the domain holders were individuals having a false address in China and operating websites that reproduced the Claimant's verbal trademark in their domain names and offered items for sale openly described as replicas of the Claimant's products. While dismissing the request for ex parte measures, the Court granted the interim measures and ordered the US based registrar to place the ".com" domain names on hold.

The Court first noted that the websites were accessible in Switzerland, amongst others in Geneva, and offered the possibility for customers to pay in Swiss Francs and to have products delivered into Switzerland. Thus the Court accepted jurisdiction based on Article 109 para. 2 of the Swiss Private International Law Act ("PIL"). As the request was based on the violation of an intellectual property right in Switzerland, Swiss law was also applicable as lex loci protectionnis (Art. 110 para. 1 PIL).

Under Article 55 para. 1 let. b of the Trademark Act, a trademark owner may request the Court to remedy an existing infringement. To obtain interim measures on that basis one must demonstrate the following conditions: (i) likelihood that a right to which the Claimant is entitled has been or may be violated in the near future and, (ii) such violation threatens to cause harm that is not easily reparable and, (iii) the situation is urgent and, (iv) the requested measure is proportionate.

Article 13 para. 2 let. b of the Trademark Act grants trademark owners the right to forbid third parties to use, amongst others, an identical or similar sign (in the latter case if it results in a risk of confusion) to offer identical goods. In the case at hand, there was a clear-cut violation of the Claimant's trademark rights, since the Defendants were offering for sale fake items advertised as such and bearing the trademarks of the Claimant. Each domain name was...

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