"UDRP Doesn't apply to .EU.COM domains" says WIPO panel

December 9th, 2002
By Demys News Service

A WIPO panelist has dismissed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) after it was decided that the Policy did not apply to .eu.com domains.

The dispute concerned the domain aventis.eu.com and was instigated by the French pharmaceutical company of the same name against the UK-based registrant of the domain. While at first the dispute appeared to be a straightforward procedure it soon ran into difficulties when it transpired that the UDRP didn't in fact apply to the domain.

The domain was registered through London-based CentralNic, who - according to their web site - offer a "wide range of alternative domain names" including [example].us.com, [example].uk.com and [example].eu.com. CentralNic owns the domain eu.com through domain name registrars Verisign and simply sells names in the third level space - adding the registrant's choice of name. This is similar to the widespread practice of creating third level names for internal corporate purposes used by the likes of IBM - uk.ibm.com and za.ibm.com being two examples.

There is, of course, nothing wrong with reselling third level domains in this manner. However, global dispute procedures such as the UDRP will apply only to the main domain, i.e. http://www.eu.com and not to any sub-domains, which will be governed on a contractual basis between CentralNic and their clients. While CentralNic could incorporate the UDRP into their contract they had failed to do so here. Strangely, CentralNic had attempted to bring the policy into the contract by stating:

CentralNic may at its sole option, cancel the registration or suspend registration of the domain name if following the ICANN Uniform Domain Name Dispute Resolution Policy, the name has been judged to infringe the trademark or other intellectual property of the complainant.

Unfortunately for the complainant, the panellist held that this statement was not an effective incorporation of the UDRP and therefore ruled that in this case he did not have jurisdiction:

In view of those considerations the Panel must - regrettably and reluctantly - come to the conclusion that it has not been established that the Policy applies to the domain name at issue and that, consequently, it has not been established that the Panel is competent to consider the case. The Panel therefore has no choice but to dismiss the Complaint.

According to the small print, CentralNic's "terms and conditions are exclusively governed by English law and by applying to register or renew the domain name you and CentralNic submit to the exclusive jurisdiction of the English courts." Therefore, Aventis will have to challenge the registrant via the English courts rather than through the cheaper and quicker UDRP arbitration process.