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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    Lawsuits and Judicial Decisions Barcelona.com Decision Reversed on Appeal
    posted by michael on Monday June 02 2003, @03:44PM

    dtobias writes "Long regarded by many as one of the worst UDRP decisions, the barcelona.com decision was nevertheless upheld in U.S. court when challenged, remaining one of a tiny number of geographical domain names that were successfully wrested (or reverse-hijacked) from their private-sector owners by governmental entities. However, the United States Court of Appeals for the Fourth Circuit has now reversed the decision."

    "The appeal decision states that the lower court erred by applying Spanish trademark law where the U.S. anti-cybersquatting law clearly requires decisions to be based on U.S. law. (But it appears the appeals judge doubts that Spanish law would justify a ruling that barcelona.com infringes the city's trademark, either.) It also reverses a judgment on a counterclaim of the city council, on the sensible grounds that no such counterclaim was ever filed ... the lower court seemed to have invented one out of thin air.

    The case is now sent back to the lower court to order appropriate remedy in accordance with the appelate ruling, which will presumably result in a domain transfer back to the original registrant."

    [Editor's note: The lower court's decision in this case was one of the weirdest I've ever seen in trademark law and seemed wholly contrary to the statute. This decision today shows there is still some justice, however delayed. (Prior ICANNWAtch item on this issue). As John Berryhill said elsewhere, and may expand in the comments below (hint, hint), this ruling re-affirms that traditional trademark principles apply to domain names. Thus, under US law, US residents who register a domain name in the US have a legal right to keep it, regardless of the existence of foreign trademarks in the same character string -- just as you would expect for any other use of a term that happens to be trademarked abroad. One hopes (but doubts) that UDRP arbitrators will get the message. -mf]

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  • UDRP
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  • Also by michael
    This discussion has been archived. No new comments can be posted.
    Barcelona.com Decision Reversed on Appeal | Log in/Create an Account | Top | 10 comments | Search Discussion
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    The Odd Thing
    by jberryhill on Tuesday June 03 2003, @06:18PM (#11781)
    User #3013 Info

    ...about lauding this opinion is that it is a tremendous waste of time and energy to have to have gone so far in order to obtain the no-brainer decision which WIPO should have rendered in the first instance, and which every other purely "geographic name" UDRP case has held.

    It does not, as some have suggested, eviscerate application of the UDRP to cross-border disputes. Many correctly-losing respondents will not have the inclination to follow up with litigation.

    The court makes clear that by choosing the UDRP, and choosing the UDRP 4(k) jurisdiction, the city ultimately controlled the fact that a US court would have a final say in this matter. The question is, "Why didn't they sue in Spain". Well, they didn't sue in Spain because, despite some bizarre comments by the city's supporters, they knew darn well they wouldn't win there either.

    If they believe otherwise then, presuming the lower court orders the name restored, they are STILL free to sue in Spain.

    The most gratifying aspect of the decision was the culmination of the efforts of a lot of people in cases such as strick.com, cello.com, and corinthians.com, to finally get a court to point to a section of the Lanham Act and call it the "reverse domain name hi-jacking provision".
    [ Reply to This | Parent ]
    Re:Corrupt UN WIPO
    by KonstantinosKomaitis on Tuesday June 03 2003, @12:26AM (#11775)
    User #3552 Info | http://www.icannwatch.org/
    Perhaps the Barcelona.com case is the beginning of the end for WIPO and the other arbitration centres that seem to follow WIPO's path. The decision has finally backfired to WIPO for the way it was approached. The fact that the appelate court decided to send it back to the lower court seems that the Court of Appeal did not even consider the case as an appeal; instead it affirms its importance by adding the geographical indications should not be brought as trademark infringement because geographical names can simply not be trademarked.
    Hopefully WIPO and the rest will realise that their decisions do not only misapply the UDRP rules, but what is worse they violate basic and fundamental principles of trademark law and not only.
    Let the games begin.
    [ Reply to This | Parent ]
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