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    Lawsuits and Judicial Decisions Forza, Barca!
    posted by DavidP on Wednesday April 03 2002, @11:47AM

    In one of the odder rulings to emerge from the domain name wars, a federal district judge in the Eastern District of Virginia has ruled that the domain name barcelona.com has to be turned over to the Barcelona City Council -- giving US trademark law a remarkable international orientation.



    There's some history here. Joan Nogueras Cobo originally registered the domain barcelona.com in 1996 and shortly thereafter began operating at that address, providing familiar 'portal' information for visitors and residents. The City of Barcelona went to WIPO and instituted a proceeding under the UDRP to have the domain transferred, and last August it obtained a favorable ruling from a Chilean arbitrator. Nogueras - who, meanwhile, had incorporated Barcelona.com, Inc. in the United States - went into US federal court, seeking a ruling that his use of Barcelona.com was "not unlawful." The City Council counter-claimed, asserting that Nogueras was liable under the recently-enacted anti-cybersquatting provisions of the Lanham Act, the federal trademark statute.

    Judge Hilton sided with the City Council, and ruled that Nogueras' use of the domain constituted "cyber-squatting" under that law and ordered the domain transferred to the city.

    Here's the interesting part. The anti-cybersquatting provisions of the federal Lanham Act provide that "the owner of a mark" can obtain an injunction against anyone who "registers or uses" a domain name that is "confusingly similar to the mark," provided the registrant has a "bad faith intent to profit trom that mark." The judge found, first, that Nogueras' use of "barcelona.com" was confusing because "an internet user would reasonably expect that the services and infomation provided by the barcelona.com website to be provided by the City of Barcelona." That's odd enough. But the harder question is: is the Barcelona City Council the "owner of a mark"? It does own a number of trademarks with the word "Barcelona" in them that are protected in Spain, under Spanish law. But it does not have a US trademark. And when the US statute uses the word "mark," as in "the owner of a mark," that has always meant "a trademark protected under US law."

    Judge Hilton, though, said that Congress was "perfectly aware of the international nature of the Internet" when it passed the anti-cybersquatting legislation back in 1998, and that it is "untenable" to suppose that Congress "only intended for US trademarks to be protected" under the statute.

    It's a striking - even a breath-taking - ruling. With the stroke of his pen, Judge Hilton reversed a presumption that has been part of US trademark law for a long time, namely that US trademark law protects those trademarks that are obtained in conformity with the provisions of US law. In his eyes, the anti-cybersquatting provisions necessarily imply recognition of any and all trademarks obtained anywhere the Internet might be found, and US registrants can be dispossessed of their domain names based upon any trademark protected under any nation's laws.

    Nogueras has indicated that he will appeal, so the Fourth Circuit Court of Appeals will get a crack at this question. Stay tuned.


     
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    This discussion has been archived. No new comments can be posted.
    Forza, Barca! | Log in/Create an Account | Top | 15 comments | Search Discussion
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    Re: Forza, Barca!
    by dtobias (dan@tobias.name) on Thursday April 04 2002, @04:46AM (#5699)
    User #2967 Info | http://domains.dan.info/
    I wonder if the lawyer for barcelona.com did a good job of presenting their side? Given some of the dubious things the judge said, I question that. For one thing, a (long) list of city-named sites that are not created or endorsed by the city governments should have been brought up. (For instance, shreveport.net, a site I was involved with in the past that has information about Shreveport, Louisiana, but is not the official city government site; nor is that at shreveport.com, another independent city-info site; the official site is where it belongs at ci.shreveport.la.us.)

    The many UDRP decisions favoring the respondent in geographical-name cases (barcelona.com was the rare, aberrant exception) should also have been brought up forcefully.
    [ Reply to This | Parent ]
      Re: Forza, Barca!
      by mjrippon on Thursday April 04 2002, @11:16PM (#5708)
      User #2960 Info

      The judgment in this case focussed on Spanish law to determine whether the City Council enjoyed trademark rights to the "Barcelona". Spanish law differs on this to US/UK law, and it was refreshing to see a US court interprete the case accordingly. If the City Council hadn't established trademark rights, their case would have been doomed.

      BTW forza is Italian. Perhaps David meant "Vamos Barca"?

      [ Reply to This | Parent ]
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