Railways Domain Case is One Big Train Wreck — Swiss Federal

Swiss Federal Railways fails in attempt to get SBB.com domain name.

Swiss Federal Railways has lost its case at World Intellectual Property Organization to get the domain name SBB.com.

The respondent in the case had founded a firm under the name Modest Black Box, Ltd. When that firm ceased operations under the name, the domain’s ownership was later transferred to the respondents’ personal name.

The panel found that the respondent has rights and interests in the SBB.com domain name, thus denying the railways’ claim:

The Panel finds that Respondent has presented substantial evidence of its establishment of rights and legitimate interests in the disputed domain name based upon its formation of a corporate enterprise (Modest Black Box, Ltd.), a substantially developed business plan to provide goods and services under the term “SBB” further to which significant investment was made, and registration of the term “SBB” as a Community Trade Mark (CTM) in 2001. The Panel is satisfied that Respondent has been commonly known by the disputed domain name, and has purchased trademark and service mark rights.6 As Respondent has pointed out, Complainant would appear to be aware of these facts from two Austrian court decisions furnished by Complainant that describe Respondent’s activities through 2002 in considerable detail.

Swiss Federal Railway’s web site is SBB.ch.

Despite Swiss Federal Railway’s knowledge of the respondent’s Modest Black Box business (following all, it furnished the panel with many documents regarding the firm), panelist Frederick M. Abbott declined to find reverse domain name hijacking:

Complainant by its own account was aware of Respondent’s capacities in connection with registration and transfer of the disputed domain name, the existence of a trademark registration at OHIM, and the existence-in-fact of a substantial (if failed) business venture under the disputed domain name. These facts might reasonably have dissuaded Complainant from initiating this proceeding. Still, Complainant’s cause of action was not so far from legal plausibility as to be considered abusive.

Mr. Abbott has an interesting definition of “so far form legal plausibility”.