Declaratory action for non-infringement dismissed in domain name dispute

Section 15 of the Barcelona Court of Appeal has held that a declaratory action for non-infringement of a Spanish trademark is not the appropriate avenue for contesting a domain name decision issued by the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Centre (Case 262/2008, May 29 2009).                       
Brazilian company Mundial SA Produtos de Consumo registered the trademark MUNDIAL in Brazil in 1948. Mundial also owns registrations for the MUNDIAL mark in many other countries, including Spain. Spanish company Movie Name Company SL subsequently registered the domain name ''. Mundial filed a complaint with WIPO pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP).

On December 28 2005 WIPO's Arbitration and Mediation Centre ordered that the domain name be transferred to Mundial on the grounds that:

  • the domain name was identical to the MUNDIAL mark;
  • Movie Name had no rights or legitimate interests in the domain name; and
  • the domain name had been registered and was being used in bad faith.                                          
To avoid the enforcement of the decision, Movie Name filed a civil action before the Spanish courts seeking a declaration of non-infringement of the MUNDIAL mark under the Spanish Trademark Act
The court dismissed the action, holding that Movie Name actually sought to obtain a declaration as to the ownership of the domain name. The court pointed out that such an objective could not be achieved by means of a declaratory action of non-infringement, as provided in the Trademark Act. According to the court, a declaration that use of a domain name does not infringe a registered trademark is different from a declaration as to a party’s rights in a domain name. The court concluded that it could not decide on the ownership of the domain name within the context of a declaratory action of non-infringement.
Unfortunately, the court did not clarify what would be the appropriate legal avenue to contest a WIPO domain name decision before the Spanish courts. Under the UDRP, the parties to a domain name dispute are entitled to initiate proceedings before the courts at any point during the administrative proceedings.                            
The judgment is not yet final.     
Carlos Morán-Medina, Elzaburu, Madrid 

Unlock unlimited access to all WTR content