Trademarks

• Author: International Law Group

Barcelona.com, Inc. (hereinafter Bcom, Inc.), is a Delaware corporation established in 1999 by Mr. Joan Nogueras Cobo (a Spanish citizen) and Mr. Shahab Hanif (a British citizen) to use the internet domain name barcelona.com as an internet-based tourist portal for the city of Barcelona, Spain. To register the domain name, Nogueras used Network Solutions, Inc., of Virginia. It has a provision in all its contracts that require the resolution of disputes through the Uniform Domain Name Dispute Resolution Policy (UDRP) put out by the Internet Corporation for Assigned Names and Numbers (ICANN) (see www.icann.org). While Bcom, Inc., maintains a New York mailing address, it does not have any employees nor does it take part in business activities in the U.S.

Nogueras was unable to obtain enough capital to develop the website, so he offered to sell the domain name to the City Council of Barcelona, Spain. Eventually, Barcelona did become interested in the domain name. Under the UDRP, it sued Nogueras before the World Intellectual Property Organization (WIPO), an ICANN-authorized dispute-resolution provider located in Switzerland.

In August 2000, WIPO ruled in favor of the City Council. It found that barcelona.com was confusingly similar to the City Council's Spanish trademarks and that Bcom, Inc., had no legitimate interest in barcelona.com. Therefore, it ordered Nogueras to assign the domain name to the City Council.

Barcelona.com then sued the City Council in a Virginia federal court under the Anticybersquatting Consumer Protection Act (ACPA) [Pub.L. No. 106-113, 113 Stat. 1501A-545]. It asked for a declaratory judgment that Bcom, Inc.'s internet domain name "barcelona.com" does not violate the Lanham Trademark Act of 1946 (15 U.S.C. Chapter 22) and sought injunctive relief. Note that, in 1999, Congress had amended the Lanham Act with the ACPA to protect trademark owners against cyberpiracy. Section 1114(2)(D)(v) of the ACPA protects domain-name registrants against overreaching by trademark owners and also provides for injunctive relief.

Applying Spanish law, the district court found that Bcom, Inc.'s use of barcelona.com was confusingly similar to Spanish trademarks owned by the Barcelona City Council that include the name "Barcelona." The district court noted that the City Council did not have a registered trademark in the name "Barcelona" by itself. Under Spanish law, however, when a trademark consists of two or more words and one word...