By an application of Swiss law, a WIPO expert has made an innovative decision by requiring the transfer of a domain name pointing to an inactive website (DCH2012-0021 Cash Converters Pty Ltd. against Mr. Botana Adolfo Miguel Rojo).
In the Expert’s opinion, the fact that the website attached to the litigious domain name has not yet been activated does not diminish the risk of confusion. Its registration could indeed presuppose imminent activation, which could lead to a preventive action for counterfeiting in accordance with the article 55. litt (a) of the Swiss Trademark Act.
Moreover, even if he does not apply these dispositions, the Expert notes that the Swiss Unfair Competition Act could be applicable to this kind of situation. Indeed, article 2 of this law asserts that is “unfair and unlawful to allow any conduct or any commercial practice which is misleading or which infringes the rules of the principles of good faith and affects relations between competitors or between suppliers and customers“.
However, it seems that there may be a difference between inactive domain names which are identical to a registered trademark and those which are only similar. While the first category can effectively obstruct the commercial development of a competitor by preventing the latter from offering goods and services via a domain name which reflects its own trademark, this is not the case in the second category.
In France, the Courts have made a very different ruling. Indeed, the Supreme Court has stated on numerous occasions since the Locatour decision (Commercial Division, December 13, 2005) that a domain name must be active before infringement can be recognized, unless in the case of a well-known brand (TGI Paris 3rd, 3rd Sec, October 29, 2010, Free c / Osmozis).
As for the UDRP process is concerned, the Experts are divided. If some adamantly refuse to consider that an inactive domain name may infringe a trademark right, others consider that it is appropriate to take all the elements into account to assess possible infringement, including public awareness of the brand.