In focus: .swiss – A labelling tool with obstacles

According to OFCOM, the .ch domain is often confused with China, whereas .swiss is an ideal marketing tool or label for the Swiss community. In contrast to .ch, .swiss is what is known as a new generic top level domain name that is subject to the terms and conditions of ICANN². After lengthy negotiations with ICANN on 16 October 2014, OFCOM has accordingly managed to enter into a registry agreement³ that permits OFCOM to operate the .swiss domain.

In addition to these requirements, the federal council also had to create the national statutory regulations. With the regulation regarding Internet domains⁴, and particularly section 5, Article 49 et seqq., the Federal Council has issued detailed regulations regarding .swiss. In contrast to .ch, OFCOM is assuming the responsibility of registrar (registry, Article 50 (a) VID) with the technical back-end being operated by CORE⁵. The legal relationships between ICANN and OFCOM on the one hand and ICANN and registrars on the other hand are subject to civil law, whereas the legal relationship between OFCOM and end customers is of an administrative nature (see fig. 1).

The legal relationship between registrars and end customers comes under private law. However, the end customer is granted an administrative right of use on account of the law (Article 27, Paragraph 2 VID). This has a number of far reaching implications regarding potential rights of appeal against OFCOM regulations in the event of unlawful use (see point VII in this regard).

From 7 September 2015, applicants should be able to apply for a domain name.

Quality should take priority over quantity for the .swiss domain. The .swiss domain should therefore be a “protected” namespace and should not pose any form of competition to .ch. OFCOM will accordingly manually review all registrations for assignment requirements and criteria.

A. General assignment requirements

As with .ch, the general assignment criteria pursuant to Article 25 et seqq. VID also apply to .swiss. Thus, only domain names consisting of 3 to 63 authorised characters may be assigned, which OFCOM specifies and may provide exceptions for the minimum number if overriding public interest warrants this. For the time being, no internationalised domain names (IDM) will be permitted for .swiss, this includes characters, such as umlauts (ä, ö, Ï, etc.). Names of municipalities and cantons and their two-letter abbreviations are reserved in accordance with Article 26, Paragraph 1 (b) VID and may only be assigned to the relevant public entities. Furthermore, according to VID regulations, the requested name may not be reserved unless the reservation was made for the applicant and any applicable, specific assignment requirements for the domain concerned are satisfied.

Moreover, OFCOM may refuse a name that is incompatible with public policy, moral standards or applicable law, or where refusal is required for technical reasons (Article 25, Paragraph 2 VID). There is subsequently a complete catalogue of reserved domain names in accordance with Article 26 VID. These are the names of federal authorities and companies, names of federal councils and federal councillors, names of official buildings, names of cantons and municipalities and the 2-character abbreviation for cantons, names and abbreviations of international organisations protected according to Swiss law, names that need to be protected at international level for first level generic domains and the registrar’s domain names. These reserved domain names may only be assigned to the respective people or bodies concerned.

B. Specific assignment requirements (Article 53 VID)

Each requested domain name is reviewed by OFCOM in terms of the following five criteria:

1. At the time of submission of the application, does the requested domain name fall into a category that can be assigned?
2. Is the applicant entitled to this?
3. Is there sufficient connection to Switzerland or does the applicant fulfil the personal assignment requirements (see point E below)?
4. Does the planned usage of the domain name comply with Swiss law (Article 53 (1) (d) VID)?
5. Is there an authorised objective connection between the name and the applicant and/or use (Article 53 (1) (e) VID)?
   

C. Assignment categories

Assignment categories distinguish between three categories (Article 53, Paragraph 1 (c) VID):

• Holder of a trademark right;
• A public body or organisation, or
• A generic domain name.

In some circumstances, this categorisation can result in difficulties as a domain name may fall into all three categories at once. Classification into the relevant category can this result in conflict with another solution see point V.Bff below).

D. Authorisation by the applicant

As an initial criterion, OFCOM checks whether the applicant i) is a holder of a trademark right, ii) is a public body or organisation or iii) otherwise has a connection with the domain name. This point coincides with the 5th criterion.

E. Personal assignment requirements of the applicant

In an initial step (from 7 September 2015), only legal persons registered in the Swiss commercial register and who also have their head office and an “effective”, that is to say an actual, administration location in Switzerland, and public bodies may apply for privileged registration of a .swiss domain name.

Purely domiciliary companies with no effective administration location in accordance with the statements issued by OFCOM may not apply for .swiss domain names. However, the regulation only refers to the requirement for actual administration if goods and/or services are to be made available under the domain name or where the domain name is to be used for marketing purposes. How OFCOM considers on the one hand checking the criterion of actual administration or how the applicant should prove the existence of the actual administration location appears to be open to question. On the other hand, websites could also be used purely for information purposes, which begs the question as to whether this requirement for actual administration really can be satisfied. Meanwhile, with privileged registration, the latter are not likely to be considered.

At a later date (see Article 55 VID), private individuals resident in Switzerland or who have Swiss citizenship (Article 53, Paragraph 1 (a) VID) may also register a domain name under .swiss. The same applies to associations and foundations not registered in the Swiss commercial register, which have their registered office and physical administrative headquarters in Switzerland.

The applicant must satisfy the registration requirements at the time of registration (Article 53, Paragraph 1 (b) VID). Legislature has left open the extent to which OFCOM will check this requirement at a later date, i.e. after successful registration.

F. Legally-compliant use

With this criterion, the federal council is seeking to prevent domain names from being used illegally. Even though Article 53 VID does not explicitly refer to domain names in connection with illegal usage, anything else would be too far reaching – as pertains to website content – the material scope of application of the VID is nevertheless restricted and also does not include website content.

G. Objective connection between the applicant and the name

The objective connection between the person making the application and the name is not based on the federal government’s Swissness legislation⁶. In this context, OFCOM specifies its own criteria for the connection.

These are satisfied if, to begin with, the authorised person has a claim under trademark law, particularly if they have a brand or company name. OFCOM leaves it open to discussion as to whether such a connection also exists if an existing domain name holder under .ch has no trademark or company rights, but can justify their claim with reference to the federal law on unfair competition (UWG)⁷. It may currently be assumed that this only includes trademark rights in the strict sense of the term. Applicants are therefore well advised to register an appropriate trademark or establish a company prior to the launch of .swiss.

Secondly, an objective connection between an applicant and a name exists if names of cantons, towns and municipalities or other public organisations that refer to an objectively related connection with the state or its activities are registered. This raises the question as to whether these names or domain names need to be exactly the same as the official name or whether special rights also exist e.g. for abbreviations (e.g. Züri.swiss), which, at any rate, is not mentioned according to Article 26 VID.

Thirdly, such a connection exists, if geographical names are registered or an agreement with the (relevant) public entity exists (Article 54 Paragraph 1 (e) point 3, 1. and 3. Gamma VID). OFCOM should have borne in mind the case of www.berneroberland.ch⁸here. However, in specific cases, this could be problematic: in the case mentioned, the Bernese Oberland Tourist Association had a legal right to the name of its association, although the tourist association is not and was not a public entity. Thus, this was also extended to the applicant in the regulation, which, according to public perception, was deemed to be an authorised party with a legitimate interest (Article 53 Paragraph 1 (e) point 3, 2. Gamma VID).

Fourthly, names are permitted in which the applicant has a legitimate interest or where the public would make a legitimate connection (e.g. generalabonnement.swiss for the SBB rail company).

H. Name assignment mandate (Article 56 VID)

The last case referred to by OFCOM regarding an objective connection between the applicant and name is the generic name (Article 53 (e) point 4 in conjunction with Article 56 VID). These result in what is known as a name assignment mandate, if the generic name is of particular interest to Switzerland.

This is the case if they represent entire or considerable segments of groups of people concerned (e.g. mieter.swiss for the Swiss Tenants’ Association) and the planned use and services are advantageous for all groups of people concerned. Here, consideration is given to Swissness, i.e. how closely such a service or product is to a community.

All applicants authorised for the assignment of a domain name by means of a name assignment mandate must particularly demonstrate that they satisfy the general and specific requirements for the assignment of a domain name in accordance with Article [?] and 53 et seqq. VID and that, with the name for which they are applying, they represent the entire or part of the group of people concerned or their application is supported by all or part of the group of people concerned. They must also demonstrate the value that their projects will add for the group of people concerned or Swiss society. They must also demonstrate compliance with trademark law regarding products and services sold via the domain name.

Domain name applicants who fall under a name assignment mandate may also cover several languages at the same time (German, French, Italian or English). This would arguably then preclude a Swiss Association of Belgian citizens from registering the Flemish name of their association in Flemish, as this is not a language specified by OFCOM. This language restriction is arguably not plausible.

The domain name is thus assigned following a tender or on the basis of a spontaneous application (Article 56 Paragraph 2 VID). A name assignment mandate is a legal instrument that is used to specify the terms of use of a domain name for generic terms such as hotel, taxi or solicitor. For this purpose, a fixed-term mandate agreement is concluded between the applicant and OFCOM, which also governs the mandatory use of the domain name. The applicant must produce a draft of this agreement (Article 56 Paragraph 3 (h) VID).

Where there are any conflicts of name assignment mandates, the domain name will be assigned to the applicant who clearly offers the greatest added value compared with the other applicants for the group of people and Swiss community concerned. This clarity is achieved by comparing “bids” with each other and the decision is at the discretion of OFCOM.

At first glance, the concept of the name assignment mandate appears to be appealing. However, there is greater complexity in the detail. The lengthy review undertaken by OFCOM incurs a one-off cost of CHF 2900.00, with annual recurring costs of CHF 360.00 thereafter. These high costs make it impossible for non-profit organisations in particular to protect domain names belonging to their community.

There are also no clear initial definitions of which names will fall under a name assignment mandate in future, and which will not. This can result in the fees for a domain name suddenly being increased at the time of registration because the name falls under the name assignment mandate at the discretion of OFCOM. For registrars that are obliged by the price disclosure regulation⁹to specify prices to the last penny, this may be a significant barrier to implementation if OFCOM does not keep to its promise (expressed verbally) to publish the relevant lists (list not yet available, as at 8 July 2015) which may be technically implemented by registrars.

I. Blocked terms

Some domain names cannot be registered under .swiss. The federal chancellery maintains a list of names that are directly and exclusively assigned to the federal government (list not yet available, as at 8 July 2015). Names and abbreviations of international organisations are also reserved for the respective organisations (Article 26 VID). In accordance with ICANN regulations, certain terms (e.g. www, whois, nic) may not be assigned.

With this sunrise period, there should be some cushioning to avoid new “swiss” domains at the first level being opened too abruptly and to avoid speculative and improper registration.¹¹ This deadline is an end of sunrise period, i.e. the time of submission of the application is not relevant for assignment¹²; this excludes non-profit organisations. In fact, the trademarks registered with the TMCH have priority over public bodies and in turn over other proprietors of trademarks, company names and designations of origin and geographical indications.¹³

You are therefore most urgently recommended to register existing trademarks in the TMCH to take advantage of this priority.

V. Assignment process

A. In general

OFCOM checks all registration applications and subsequently publishes them according to their quality. This quick preliminary check of each registration application (applicant authorisation, domain name or character string, connection between applicant and character string) should avoid the need for registrars to publish applications that do not or do not quite fulfil the general and specific terms and conditions for assignment of a .swiss domain name.¹⁴If they do fulfil the general assignment criteria, they are published for 20 days. Other applicants may submit a registration application for the same domain name within a subsequent period of 20 days after release of a proposed domain name. However, the author does not consider that it is clear whether these newly proposed domain names should nevertheless still be considered after the first privileged assignment phase with regard to the subsequent assessment by OFCOM. Where there are several applications, OFCOM refers to the following criteria.

B. Conflicts between various categories

1. Trademarks in the TMCH
To begin with, OFCOM takes account of the trademarks registered in the TMCH. This category includes trademarks registered in the TMCH necessarily, and based on the ICANN registry agreement, for which a privileged registration period of at least 30 days must be provided.¹⁵

2. Public bodies and public organisations
Secondly, those names are assigned for which public bodies or public organisations have applied or for which the public activities of such an entity have applied accordingly for an associated name (Article 57 Paragraph 2 (a) VID).

3. Protected trademark in Switzerland
With regard to trademark holders who have a protected trademark in Switzerland and those who have no right to a trademark, the application from a holder of the right to a trademark should proceed (Article 57 Paragraph 2 (c) VID).

C. Conflicts within a category

1. Public bodies and public organisations
Where there are conflicts within the public bodies category, priority for a domain name should first be given to those public bodies representing the federal government, and then to those bodies offering greater added value. If the applicants do not agree, OFCOM may also dispense with assignment to either party. (Article 57 Paragraph 2 (B) VID).

2. Protected trademark in Switzerland
Where there are conflicts within the trademark holders category in the narrower sense of providing protection in Switzerland, trademarks for company names and naming rights of foundations and associations registered in the commercial register take priority, which in turn take priority over designations of origin and geographical indications registered and protected controlled designations of origin (names of wines) and indications of origin that involve trade ordinances. However, the registrar assigns the domain names concerned to be auctioned to the highest bidder, if the applicants have competing rights to the trademark for the domain name concerned, unless it is deemed to be inappropriate to hold an auction on account of the overall circumstances or the applicants; the proceeds of the auction go to the federal treasury. (Article 57 Paragraph 2 (d) VID), where the revenue goes to the federal treasury.

3. Generic domain names
Where an NGO is connected to another NGO, assignment should be made to the NGO that submitted the application first. With other organisations, consideration is given to the one that offers greater added value. If this cannot be ascertained and no agreement is reached, an auction is held, or it is decided by lot. Whether and when an auction or lot is brought into play is at the discretion of OFCOM.

If the applicants have a benefit that is in the interests of one Swiss community but conflicts with the interests of another community, the community that brings the greatest added value to that community should receive the domain name. It would therefore be interesting to see how OFCOM accounts for this added value. If it is not possible to account for this added value, it is decided by lot or auction (Article 57 Paragraph 2 (f) VID).

After the first phase of the .swiss domain name assignment for legal entities and public bodies, it should be opened to the general public. However, there should still always be compliance with the quality and assignment criteria and the processing chain.¹⁶ However, how private individuals and individual companies that are not registered in the commercial register can successfully endeavour to obtain a .swiss domain name and which criteria OFCOM will apply are currently questions that remain outstanding.

Arguably, publication of the domain name requested as part of the privileged assignment does not result in an option for an allegedly authorised third-party to appeal. However, an individual application may be submitted, which is then assessed by OFCOM as part of the conflict-of-law rules as per point V.B and V.C together with the initial registration.

If the domain name is not then assigned to the applicant, OFCOM, as an appeal body according to Article 26 VID, makes a decision within 30 days, if a decision is required, and advises the applicant of the appropriate address for correspondence if their head office or place of residence is abroad.

Administrative appeals against this decision, where it is a contestable provision according to Article 5 VwVG (Federal law on administrative procedures), can then be brought.

After successful assignment, naturally, if there were a better entitled party that did not submit a registration application or that lost out in the registration process (see point V), they may bring a civil action, a UDRP¹⁷ or URS¹⁸ or civil action proceedings and thus (re)gain the contested domain.

The fees for the .swiss domain are specified in the UVEK (Department of the Environment, Transport, Energy and Communications) regulation issued on 7 December regarding the approach to management fees in telecommunications dated 7 December 2007¹⁹. At present, we only know that the wholesale price, i.e. the price invoiced to the registrars, is CHD 90.00. However, as registrars need to be ICANN accredited and separate procedures for invoicing need to be programmed with OFCOM or OFCOM’s back-end registry and also adapted to their websites, it is likely that the price to end customers will be twice this amount.

For generic domain names that are assigned in a name assignment mandate, a further CHF 2900.00 is payable. The reason for such a high figure is that these generic domain names ultimately have to be individually assessed by OFCOM in the assignment process. Annual costs of CHF 360.00 may also be anticipated for these domain names.

This cost structure for generic domain names should therefore mean that only a few entitled parties should make this kind of application.

All registrars clearly need to sign a registry agreement with OFCOM²⁰ and a registrar accreditation agreement with ICANN. In the context of the latter, the registrar is obliged to forward data to ICANN that is more comprehensive than the data from the public WHOIS as per Article 10 VID, particularly also information from the operation journal in accordance with Article 11 VID. The legal justification for personal data processing by the registry according to Article 14 VID arguably does not cover this disclosure to ICANN. The VID provides no legal basis whatsoever for registrars regarding this matter. Consequently, serious questions pertaining to data protection law remain open, and as yet unanswered by OFCOM, and also have a corresponding impact on the domain name proprietor. Thus, the domain name holder’s right to information in accordance with data protection law is not guaranteed, as they have no option to assert this with ICANN.

Also, in accordance with the registrar accreditation agreements, registrations known as fiduciary registrations under .swiss may still be made. However, ICANN must disclose if a third party asserts a claim.

Especially in connection with new campaigns and initiatives or company restructures, this may in future result in failure to register a .swiss domain name when registration of a trademark with the trustee cannot be proven.

The assignment by OFCOM itself offers no guarantee that the .swiss domain name will not affect the rights of a more entitled third party and that they will not subsequently contest this domain name, which is already the case with registration under the current TLD.

A less complex solution for .swiss domain name assignment would have been much preferred, as the automated and rapid assignment also means a quick “time to market”. This speed and agility is also a quality criterion.

1. http://www.dotswiss.ch/de/news/200-swiss-information-fuer-registrare-und-fachleute (As at 09.07.2015, from September 07.09. 2015 available at www.nic.swiss.

2. https://www.icann.org (As at 09.07.2015).

3. https://www.icann.org/resources/agreement/swiss-2014-10-16-en (As at 09.07.2015).

4. Regulation regarding Internet domains published 05.11.2014 (VID, SR 784.104.2).

5. http://www.corenic.org (As at 09.07.2015).

6. Equally COTTINELLI, SENTA, .swiss and selected aspects of the regulation regarding Internet domains, Masters thesis, University of St. Gallen 2014, available at http://senta.ch/attachments/File/Webversion-MA-Arb-Senta-Cottinelli.pdf.

7. Federal law against unfair competition dated 19 December 1986 (SR 241).

8. BGE 126 III 239.

9. Regulation regarding the disclosure of prices Ordinance on Price Disclosure dated 11 December 1978 (SR 942.211, Ordinance on Price Disclosure / PBV) and http://www.seco.admin.ch/themen/00645/00654/index.html?lang=de (as at 09.07.2015).

10. http://www.trademark-clearinghouse.com/de (TMCH as at 09.07.2015).

11. Explanatory report (FN 6), p. 39.

12. Explanatory report (FN 6), p. 40.

13. In accordance with the regulation regarding the protection of designation of origins and geographical indications for agricultural products and processed agricultural products dated 28 May 1997 (SR 910.12, PDO/PGI regulation).

14. Explanatory report (FN 6), p. 40.

15. Explanatory report (FN 6), p. 39.

16. Explanatory report (FN 6), p. 39.

17. Available at https://www.icann.org/resources/pages/help/dndr/udrp-en(as at 09.07.2015).

18. Available at http://newgtlds.icann.org/en/announcements-and-media/announcement-05mar13-en (as at 09.07.2015).

19. DTEC regulation regarding the management fee concepts in telecommunications dated 7 December 2007 (DTEC telecommunication fees regulation, SR 784.106.12).

20. Available at http://www.dotswiss.ch/images/pdf/rra.pdf, (as at 09.07.2015), from 7 September 2015 available at www.nic.swiss .