Surprised? Maybe so. Maybe not. Maybe you don't care. The STORY of the path and battle for the domain name of Barcelona.com is long, murky, and messy.
There are 4 Steps here:
- Step 1: The registration of Barcelona.com
- Step 2: WIPO arbitration favors transfer of domain name to Barcelona
- Step 3: The USA District Court upholds WIPO's decision to transfer name
- Step 4: The appeal, reversal of decision by the USA Eastern District Court
Step 1) Barcelona.com was registered as a domain name in 1996 in the USA by a man and his wife - both Spanish citizens.
The 1999 complaint was made to Internet Corporation for Assigned Names and Numbers"ICANN") and the World Intellectual Property Organization Court in Virginia, USA but then reversed by the District Court of Appeals in the same state for the abbreviated following reasons. (see full transcript HERE - interesting reading but with lots of "Legal Speak")
When we apply the Lanham Act, not Spanish law, in determining whether Bcom, Inc.’s registration and use ofStep 2) The (original) Decision in favor of the City of Barcelona...
isunlawful, the ineluctable conclusion follows that Bcom, Inc.’s registration and use of the name "Barcelona" is not unlawful. Under the Lanham Act, and apparently even under Spanish law, the City Council could not obtain a trademark interest in a purely descriptive geographical designation that refers only to the City of Barcelona. See 15 U.S.C. § 1052(e)(2); see also Spanish Trademark Law of 1988, Art. 11(1)(c) (forbidding registration of marks consisting exclusively of "geographical origin"). Under United States trademark law, a geographic designation can obtain trademark protection if that designation acquires secondary meaning. See, e.g., Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417, 421 (4th Cir. 1998). On the record in this case, however, there was no evidence that the public — in the United States or elsewhere — associates "Barcelona" with anything other than the City itself. Indeed, the Chief Director of the City Council submitted an affidavit stating that "[t]he City does not own and is not using any trademarks in the United States, to identify any goods or services." Therefore, under United States trademark law, "Barcelona" should have been treated as a purely descriptive geographical term entitled to no trademark protection. See 15 U.S.C. § 1052(e)(2). It follows then that there was nothing unlawful about Nogueras’ registration of , nor is there anythingunlawful under United States trademark law about Bcom, Inc.’s continued use of that domain name.
For these reasons, we conclude that Bcom, Inc. established entitlement to relief under 15 U.S.C. § 1114(2)(D)(v) with respect to the domain name
, and accordingly we reverse the district court’s ruling in this regard.
Read the original 2000 World Intellectual Property Organization Arbitration and Mediation Center (a.k.a."WIPO") case and decision below:
WIPO Decision: Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. - Text of  decision to transfer Barcelona.com from Barcelona.com Inc. to Excelentisimo Ayuntamiento de Barcelona by panelist Marino Porzio.Step 3) The case in the USA Eastern District Court upholding the WIPO case in favor of The City of Barcelona...
Article:The Final (?) Step 4) Successful reversal and appeal; returning Barcelona.com to its original owners.
"Court rules against barcelona.com"
Published Tuesday 5th March 2002
A Spanish travel site is considering an appeal against a US court's decision to strip it of its domain name.
The US District Court for the Eastern District of Virginia upheld an earlier ruling ordering the owners of barcelona.com had to hand over the domain to the Barcelona City Council. (more ...)
An abbreviation of the same case can be read on the iBusinessLaw.info article below:
Clarity and Good Sense from the 4th Circuit on ACPA [Domain Names] -- posted at 10:10 pmThe aforementioned Barcelona.com case was truly unusual, practically setting precedent because the ruling was contrary to the vast majority of WIPO decisions relative to geographic identifier domain disputes.
The Fourth Circuit yesterday reversed one of the most outrageous cybersquatting decisions to emerge from the Eastern District of Virginia. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, No. 02-1396 (4th. Cir. Jun. 2, 2003). The appellate decision stands as perhaps the most cogent statement of the jurisdictional and substantive basis for “review” of UDRP decisions by a federal court. (more ...)
Not surprisingly, in great part due to the "path" of the Barcelona.com domain name, all subsequent WIPO cases on geographic identifier domain disputes have not ruled in favor of the city/country authority in claiming a domain name except for some very special circumstances.
So to sum up this mess, the domain name of Barcelona.com remains - at least for now - with its original owners whom acted fast, first, and with a plan. Who would've thought - or WOULDN'T have thought - it would become (one of) the largest Barcelona portals on the Internet?