The case is unusual because the US court was hearing arguments
from Spanish parties on points of Spanish trade mark law while also
applying US law. However, possibly the most controversial point was
the assertion that a local government should have trade mark rights
in the name of a city.
A panel of the World Intellectual Property Organisation (WIPO)
first considered the dispute in August 2000. The domain name
barcelona.com was registered in 1996 by Concepcio Riera, a
Barcelona resident. When the City of Barcelona demanded the name in
early 2000, she transferred the name to a US based company,
Barcelona Inc., operated by her together with her husband. The web
site was a portal offering news and tourism information on the
city.
The WIPO arbitrator did not consider this portal constituted
evidence of a legitimate right to the domain name. The arbitrator
also said that the name was being used in bad faith:
“...it is obvious that the main and only
purpose of such plan is to commercially exploit information about
the city of Barcelona in Spain and its province, particularly,
using the information prepared and provided by [the city] as part
of its public service."
The arbitrator suggested that it is reasonable to assume that
anyone using the address Barcelona.com "would normally expect to
reach some official body or representative of the city of Barcelona
itself."
The WIPO decision was, in effect, appealed to a court by the
original owners of the name, as is allowed under WIPO’s rules. The
case went to a district court in Virginia, the US state which is
the home of the registry for all domain names ending in .com.
According to Newsbytes.com, the court was chosen by the city as its
preferred forum for any future litigation over the name. On 22nd
February, Judge Claude Hilton supported the original WIPO
ruling.
Hilton noted that the City did not actually have a trade mark
registration for the word “Barcelona”. However, he considered that
the City’s registration of various marks including the word
“Barcelona” gave it certain rights over the single word, despite
place names being generally ineligible for trade mark protection.
He wrote:
“Under Spanish law, when trade marks
consisting of two or more words contain one word that stands out in
a predominant manner, that dominant word must be given decisive
relevance.”
Hilton supported WIPO’s comments that visitors to Barcelona.com
would expect that the services offered would be those of the City,
notwithstanding the .com domain’s more common use for commercial
entities. He also commented that a business plan which the owners
of the name put to the City when seeking investment for the web
site “contained a grossly exaggerated appraisal of the worth” of
the domain name.
The judge went on to apply the US Anticybersquatting Consumer
Protection Act to the foreign trade mark. He noted that the text of
the Act “makes no distinction between United States or foreign
marks even though trade mark law has historically been governed and
regulated on a national level.”
He added, “It is untenable to suppose that Congress, aware of
the fact that the internet is so international in nature, only
intended for US trade marks to be protected under the
Anticybersquatting statute.” The City relied upon the Act’s
provisions against bad faith use of a domain name which is
“identical or confusingly similar” to a trade mark.
