Fourth Circuit overturns 'barcelona.com' decision

In an 18-page landmark decision, a three-judge panel of the US Court of Appeals for the Fourth Circuit has overturned one of the most controversial decisions issued under the Uniform Domain Name Dispute Resolution Policy (UDRP). The court ruled that a trademark registered outside the United States is not protectable under US law and, therefore, a US court may not order the transfer of a domain name including that mark.

The city of Barcelona won a controversial decision in August 2000 from a World Intellectual Property Organization (WIPO) panellist who determined that:

  • the domain name 'barcelona.com' was confusingly similar to the city's Spanish trademarks;

  • the registrant had no legitimate interest in the domain name; and

  • the domain name had been registered in bad faith.

Joan Nogueras, the registrant of 'barcelona.com', subsequently filed a declaratory judgment action in the United States under the Anti-cybersquatting Consumer Protection Act (ACPA).

The district court upheld the WIPO decision, finding that an internet user would expect to find an official website for the city of Barcelona under the disputed domain name. The district court also determined that (i) the city's Spanish trademark rights allowed it to prevail under the ACPA, and (ii) Nogueras had registered the domain name in bad faith in violation of Spanish law.

On appeal, the Fourth Circuit declared that the district court had erred in applying Spanish rather than US law because "the ACPA explicitly requires the application of the Lanham Act, not foreign law". The court also found that (i) the city does not have a registered trademark for the word 'Barcelona' alone in the United States, and (ii) 'Barcelona' should have been treated as a purely descriptive geographical term entitled to no trademark protection. Consequently, it ruled that Nogueras's registration and use of the domain name was lawful under the Lanham Act.

This decision confirms that foreign entities cannot rely on foreign trademarks alone in bringing actions under the ACPA; plaintiffs must have some trademark right recognized in the United States. It also confirms the long line of UDRP decisions issued since August 2000 that state that cities and municipalities have no cause of action under the UDRP against the registrants of domain names identical to the names of those cities or municipalities.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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