A WIPO expert's decision under the SWITCH dispute resolution policy (for .ch and .li domains) is the first case under Swiss law that deals with "renewal snatching", i.e. registering lapsed domain names (also called extension exaggeration, or alert angling).

The facts of the case are such that the Claimant is the owner of a Swiss trademark for SHOP4 covering various advertising and software related services in classes 35 and 42 ("the Trademark") which was registered on January 19, 2010.

A company affiliated with the Claimant (Internet Explorer GmbH which is managed and controlled by the same person and of which the Claimant is a partner – "Gesellschafter") was the owner of the Domain Name until July 21, 2014 until that company lost the Domain Name because of apparent problems of communication with SWITCH which caused the renewal payment to be late.

The Domain Name was registered on August 5, 2014. It resolves to a website on which sport shoes are offered for sale and redirects to another domain name for this purpose (i.e.) which reflects the NIKE trademark, whereby shoes of different brands are offered for sale on this website (i.e. NIKE and BIRKENSTOCK).

The expert held that there was no clear infringement of Claimant's trade mark rights due to the lack of similarity of the products for which the SHOP4 mark claimed protection and the goods offered on Respondent's website.

He held, however, that the snatching of the domain name was unfair competition and ordered the transfer of the name. In the expert's view, the Respondent's conduct violated the Swiss Unfair Competition Act (UCA). The Respondent's action of registering the Domain Name immediately after a company affiliated to the Claimant lost the registration of the Domain Name because of an error during the renewal process, amounted to an unfair and unlawful practice within the meaning of Article 2 UCA.

While the "first come, first served" rule applied for ".ch" domain names as provided by article 2.2 of the General Terms and Conditions (GTC) for the registration and administration of domain names under the domain ".ch" and ".li", this rule did not and cannot prevent from holding that the registration and use of a domain name can constitute a violation of third party rights in certain circumstances.

A company affiliated with the Claimant was the registrant of the Domain Name until July 2014 and the Claimant was the legitimate owner of a trademark for SHOP4 in Switzerland since 2010 (i.e. the Trademark) that is reflected in the Domain Name. Respondent has not participated in these proceedings and it has not conclusively pleaded and proven any relevant grounds for defense. No justifiable reasons have been brought forward by the Respondent in order to justify its conduct, particularly about the choice to register the Domain Name (which corresponds exactly to the Trademark registered by the Claimant in Switzerland) very shortly after it was available for registration. In addition, this Expert noted that the Respondent could not be reached by the Claimant under the registered WhoIs contact information which corroborated further the impression of unfair conduct in this case.

The outcome of the case is correct in my opinion, but the expert carefully avoided addressing the big elephant in the room: under the SWITCH dispute resolution policy, domain names can only be transferred or cancelled in case of a clear infringement of a right in a distinctive sign 

An elegant way of achieving substantially the same outcome might have been to simply point out to the registrar that the WHOIS information was likely false (given that noone could be reached there), which is ground for cancellation of the domain name registration (SWITCH General Terms and Conditions, Sect. 3.3.2)