Panellist unable to apply UDRP to 'eu.com' domain names
In Aventis v S Priost c/o Lark Computer Ltd, World Intellectual Property Organization panellist Henry Olsson has dismissed a complaint brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), ruling that the policy does not apply to third-level names within the 'eu.com' domain space. Instead, they are governed by the registration agreement between registrar CentralNic and the domain name registrant.
CentralNic owns eu.com and sells names in the third-level space (ie, 'name.eu.com'). In this case, Priost registered 'aventis.eu.com' with CentralNic, in response to which the French pharmaceutical company Aventis brought a complaint under the UDRP for cybersquatting. Aventis claimed that because CentralNic is an ICANN-accredited registrar, it should comply with the UDRP. CentralNic's registration terms and conditions state:
"CentralNic may at its sole option, cancel the registration of a domain name if, following a finding under the [UDRP], the name has been judged to infringe the trademark or other intellectual property of the complainant."
Olsson held that the UDRP applies only to 'eu.com' and not to any related third-level domain names, which are instead governed by the registration agreement between CentralNic and the domain name registrant. He found that CentralNic's terms and conditions do not sufficiently incorporate the UDRP as there is no obligation on a registrant to submit to mandatory proceedings. In addition, the registration agreement contains a clause giving exclusive jurisdiction to the UK courts. Such a clause is inconsistent with any finding that the UDRP applies.
Rachel Mortimer and Matthew Harris, Herbert Smith, London
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