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[nc-udrp] Follow-up from WIPO on .uk.com and similar extensions

Forwarded from the Business Constituency mail list:
Please see below, a response from the Head of Legal Development at WIPO, Mr Christian Wichard, pertaining to the abovementioned extensions and the UDRP's applicability to these extensions:-

In the "Terms and Conditions" of CentralNic, the company offering this kind of registrations, Clause 14 states: "CentralNic may at its sole option, cancel the registration or suspend registration of the domain name if a. ordered to do so by a court of competent jurisdiction; b. 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; c. the use of the domain name is illegal; d. if there is a breach of these terms and conditions; including without limitation, clause 1; e. the continued use of a domain name could cause technical problems on the Internet."

In two recent decisions, WIPO Panelists have found that the UDRP does not apply to domain names registered under these (or similar) terms and conditions.

The decision, rendered in case No. D2001-1484 (http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1484.html), concerned a third level domain name registered in ".uk.com".  In that decision, the Panelist found as follows:

"The Panel questions whether the new/current CentralNic terms and conditions properly and effectively incorporate the Policy.  There appears to be no express incorporation of the Policy...The Panel has not been shown the terms of the agreement(s) between CentralNic and ICANN and/or the registrar for the '.uk.com' domain names, but it may be that the only entity properly subject to the Policy in respect of the '.uk.com' domain names is CentralNic itself."

The Panel therefore found that it had no jurisdiction to hear the Complaint insofar as the "uk.com" domain names were concerned.  The panel emphasized, however, that it did "not seek to circumscribe how a future panel might approach the issue."  

In case No D2002-0895 (http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0895.html), i9nvolving a ".eu.com" domain name, the Panel held

"There is, however, nowhere in the Terms and Conditions...any explicit reference to the Policy nor to any obligation to submit to a mandatory administrative proceeding; on the contrary, the reference to the exclusive jurisdiction of the English courts seems to point to the contrary. Furthermore, the wording of the clause...seems to mean that the Registrar has the option to follow a decision or not, and in any case there is no mention of any possibility to transfer a domain name to a complainant, and, further, reference is made only to "infringement" of a trademark and not to the type of finding that Paragraph 4 of the Policy is concerned with...This lack of legal clarity about the applicability of the Policy and about the resulting obligation for Respondent to submit to a mandatory administrative proceeding is a particularly serious matter in the context of the simplified written administrative procedure under the Policy, which, in the view of the Panel, must h a! ! ve a clear legal basis...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."

Since CentralNic does not seem to have revised its terms and conditions, the above considerations would still seem to apply. Even though future panels would not be bound by the above considerations, they are likely to follow them as a precendent in similar cases.  

I suggest that you contact CentralNic (http://www.centralnic.com/), itself regarding the application of any dispute resolution mechanism referred nto in their 'Terms and Condistions".

Kind Regards,

Samantha Frida
Domain Name Attorney

Philips Intellectual Property & Standards

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