Shortly after I recently wrote about WIPO's new role as a domain name dispute provider for the .eu ccTLD, the Forum published its first decision on another type of "eu" domain name: eu.com.
The decision involved the domain name nike.eu.com. What makes this case interesting is that it represents one of the few .com domain name disputes that includes a country-code in the second-level portion of the domain name.
To be clear, the .com top-level domain is subject to the UDRP -- which means that domain names in the second level (such as "example" in example.com) can be disputed under the UDRP. But, historically, third-level .com domains (such as "three" in three.example.com) have been considered outside the scope of the UDRP.
CentralNic Dispute Resolution Policy
Despite this, the registrants of a handful of second-level domain names that correspond to country codes have adopted domain name dispute policies for third-level domain names. Most of these second-level domain names are controlled by CentralNic, a registry operator:
- .ae.org
- .africa.com
- .ar.com
- .br.com
- .cn.com
- .de.com
- .eu.com
- .gb.com
- .gb.net
- .gr.com
- .hu.com
- .hu.net
- .jp.net
- .jpn.com
- .kr.com
- .mex.com
- .no.com
- .qc.com
- .ru.com
- .sa.com
- .se.com
- .se.net
- .uk.com
- .uk.net
- .us.com
- .us.org
- .uy.com
- .za.com
Third-level domain names registered within these second-level domains are subject to the CentralNic Dispute Resolution Policy ("CDRP"). In addition, the operator of the .co.com domain name has adopted the UDRP for third-level domain names.
CDRP v. UDRP
The CDRP is very similar, but not identical, to the UDRP. Here are a few key differences:
- The CDRP defines a "domain name" as "any domain name registered under a sub-domain provided by CentralNic," while the UDRP applies to second-level domains within those top-level domains that have adopted the UDRP (such as .com, .net, .org and all of the new gTLDS).
- The CDRP requires a trademark owner to participate in a 10-day free CentralNic mediation process before filing a CDRP complaint. The UDRP contains no such mediation process.
- The third element of the CDRP requires only that a trademark owner prove that the domain name "should be considered as having been registered or being used in bad faith" (emphasis added), but the UDRP requires a trademark owner to prove both registration and use in bad faith.
The Forum (formerly the National Arbitration Forum) is the only CDRP-approved dispute resolution provider and has handled about a dozen CDRP cases since 2015. But the nike.eu.com case was the first one involving the "eu" second-level domain.
The nike.eu.com Decision
The panel in the nike.eu.com case apparently found the dispute straightforward, writing that "Complainant’s NIKE trademark is well-known and registered in many countries throughout the world" and noting that "Respondent uses the <nike.eu.com> domain name to perpetrate a phishing scheme whereby <nike.eu.com> website visitors, who may also be Complainant’s customers, are deceived into revealing proprietary personal data such as email addresses and account passwords."
As a result, the panel ordered the nike.eu.com domain name transferred to Nike, Inc.
A Reminder for Trademark Owners
While there's nothing novel in the nike.eu.com decision, the case is an important reminder that some third-level domain names within .com (and also .net and .org -- as the list above shows) are subject to a very useful dispute policy. Trademark owners should consider these policies if a dispute arises.
