Courts consider famous name cybersquatting for the first time

Spain

Two courts of first instance have considered the first cybersquatting cases in Spain involving the registration of domain names identical or confusingly similar to two well-known writers' names. In both cases, the courts ruled in favour of the plaintiffs, ordering the same defendant to transfer the disputed names.

The defendant had registered 'lorenzosilva.com' and 'rosamontero.com'. Lorenzo Silva and Rosa Montero are both famous Spanish writers. They each sued the defendant for trademark infringement, arguing that they had acquired common law trademark rights in their names.

The two courts of first instance hearing these separate cases did not find that the plaintiffs had acquired common law trademark rights in their names. Nevertheless, the courts did find that the defendant had violated the Protection of Personal and Family Privacy Act, under which a person's name is protected.

Referring to, but not relying on, the Uniform Domain Name Dispute Resolution Policy, the courts rejected the defendant's argument that he had registered the disputed domain names for the purpose of developing a website devoted to news on famous people. The courts noted that he had registered many domain names incorporating famous people's names but had not yet developed such a fan website. This, they concluded, was evidence that the defendant had registered the names in bad faith, intending to prevent celebrities from registering domain names for his own financial gain.

Accordingly, in both cases, the defendant was ordered to transfer the domain names to Silva and Montero.

José Carlos Erdozain, Gómez-Acebo & Pombo, Madrid

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