Spanish judge overturns WIPO refusal to transfer ''


A Spanish judge has overturned a decision issued by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre and ordered the transfer of the domain name '' to the plaintiff, which already holds '' as a registered domain name and trademark.

Marqueze Producciones operates and manages various online resources, including a popular adult website. It has used the domain name '', which is based on the founder's surname, since 1998. In November 1999 it filed a trademark application for MARQUEZE.NET with the Spanish Bureau of Patents and Trademarks. This was granted in May 2000.

The domain name '' was registered by Carlos Sanz Valbuena in June 1999 on behalf of Internet Hispano SL, which operates another successful adult site at ''.

Marqueze wrote to Valbuena and Internet Hispano asking them to stop operating a website at '', claiming this infringed Marqueze's trademark. When it received no response, Marqueze filed a request for the domain name's transfer with the WIPO Arbitration and Mediation Centre.

Applying the criteria of the Uniform Domain Name Dispute Resolution Policy, the one-member panel decided that Marqueze had succeeded in demonstrating that the disputed domain name was identical to its domain name, and that the defendant had no rights or real interest in ''. Nevertheless, the panel rejected the claim on the grounds that Marqueze had failed to show that the registration and use of '' had been carried out in bad faith.

Decisions made by WIPO panels do not prevent parties from pursuing further action. Thus, as both parties are Spanish, Marqueze filed a claim in Spain seeking a declaration that both the registration and use of '' constituted trademark infringement and an act of unfair competition.

The Spanish judge's decision, which was issued by default and based only on evidence provided by Marqueze, upheld the claim. The defendant was ordered to immediately cease using the domain name and proceed with the necessary steps to transfer it to Marqueze.

Some commentators have queried whether this decision means that the requirements of national judges as regards bad-faith domain name registrations are not as stringent as those of WIPO panellists. If so, is this difference in standards likely to signal a new trend for unsuccessful domain name complaints being referred to national judges?

Rosario Jimenez-Batalla, Batalla Abogados, Madrid

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