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Posted by Paul Szynol on Monday, April 08 @ 18:03:18 EDT
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In 1996,
Joan Nogueras Cobo, a Spanish entrepreneur, registered
barcelona.com
as the domain name for his web site. The site's debut came a year later,
with content and functionality that included "information about the city
of Barcelona, an email service, a chat room, advertising and links to other
Internet services". In this form, the web site operated for two years.
In 1999, Nogueras offered to sell the domain name to the City Council
of Barcelona, and he met twice with the City Council's representatives to
negotiate the transfer. After the second meeting, however, the Council's
representatives demanded that the domain be transferred to the City Council
of Barcelona--free of charge.
Rather than transfer the domain name to the City Council, though, Nogueras
took express possession of the domain name. He re-registered it, this time
under his own, rather than his wife's, name, as he had originally done.
He then incorporated Barcelona.com in Delaware, and, in the whois database,
substituted a United States address for the Spanish address he had used since
he registered the site over half a decade earlier. Barcelona.com, Inc. filed
a complaint with
request for declaratory relief
.
In its review of these facts a few weeks ago, the
Eastern District Court of Virginia
combined elements of the American Anticybersquatting Consumer Protection
Act ("ACPA") with aspects of Spanish trademark law, and estimated that Nogueras
violated the respective laws of both countries. Judge Claude M. Hilton
concluded that barcelona.com properly belongs to Barcelona's City Council.
The court voiced a number of condemning arguments. Distilled to their basics,
they are as follows.
1. Barcelona.com, goes one argument, is similar enough to the Council's
other trademarks to confuse Internet users. Not only that, but the average
"Internet user would reasonably expect the services and information provided
by the barcelona.com website to be offered by the City of Barcelona, Spain."
The court emphasizes the fact that an average Internet user would expect
Barcelona.com to be managed by a government affiliated entity. There is
no clear reason why an Internet user should expect a government web site
when s/he enters "barcelona.com" in the browser's address window. There
is no tradition of domain names that end with ".com", are names of cities,
and are run by governments. Amazon.com doesn't lead to a web site in Brazil.
Paris.com
redirects to Parishotels.com, a web site that is written in English. It
was "[c]reated in 1996 by Miss Dominique PLANCHE , the ParisHotels website
currently employs a team of 7 people."
Newyork.com
asks that users "[p]lease note that NewYork.com does not represent any city
or state government organization." Madrid.com is not in operation, but it
is registered to Easylink Service Corp. As is
London.com
, which translates to londontown.com, and has this piece of data: " ©
Copyright 1997 - 2002 Globalvision Online (UK) Limited. All rights reserved."
And Easylink Service Corp's address, by the way, is not 10 Downing Street,
but Edison, New Jersey.
The use of ".com" as the first-level domain conveys no geographical information
and indicates a commercial enterprise, which, if anything, should suggest
that this *isn't* a government run web site. The court's interpretation
actually ignores the practice of identifying government web sites with specifically
created first-level domain names. Thus, in the U.S., government web sites
are marked with a ".gov" first-level domain name. The British Prime Minister's
web site is at http://www.number-10.gov.uk
, and is even more precise: the first-level domain places it on the political
map, and the second level-domain name reveals its function. Spain, in any
case, has a first level domain assigned to it--".es"--and a government entity
can easily assign a second-level domain name that identifies it as a government
entity. One would reasonably expect a national government to use a confirmation
mark that asserts its territorial sovereignty and function.
Nor should there be confusion, or frustrated expectation, with regard
to the web site's content. Barcelona.com distributed information which, given the domain
name, any intelligent user could have expected to encounter. It is a one
word name, moreover, and therefore easily distinguished from, say, "BarcelonaHotels.com".
The likelihood of confusion is minimized rather than increased by the domain
name's pointed simplicity.
2. The corporation of Barcelona.com, incorporated in Delaware and registered
under a New York City address, has only a skeletal presence in the US-- it
has neither an office in New York City, nor a New York City telephone number;
moreover, it has no employees, and only two shareholders--Nogueras' wife,
and Nogueras himself. Most of its services, moreover, are "provided through
third party servers". Ergo, Nogueras, clearly a hands-off kinda guy, was
never really interested in running a business, but simply purchased the domain
name for the exclusive purpose of making a future profit by selling it to
the City Council of Barcelona--and thereby violating the ACPA:
(d)(1)(A) A person shall be liable in a civil action by the owner of a mark,
including a personal name which is protected as a mark under this section,
if, without regard to the goods or services of the parties, that person--
"(i) has a bad faith intent to profit from that mark, including a personal
name which is protected as a mark under this section; and
Judge Hilton applied this standard in
Virtual Works v. Volkswagen
, where he found that Virtual Works violated clause (i) above because it
purchased VW.net as its domain name partly in anticipation of selling it
to Volkswagen. But there are no grounds for the conclusion that Nogueras
bought the domain name solely--or at all--to make a profit by selling it.
On the contrary, the web site's two year tenure in cyberspace, and the length
of time that passed before Nogueras attempted to sell the domain name (three
years), both indicate that Nogueras was interested in operating a web site,
not in selling its domain name.
Nogueras did, however, purchase over 60 other domain names that include
city names, and he registered around 100 domain names in general. The court
therefore reasonably concluded that Nogueras is a cybersquatter; and that Barcelona.com, Inc. a mere veneer of legitimacy. The court emphasized this perception of the plaintiff by remarking that many of the web site's services were hosted by third-party servers rather than servers owned by Nogueras. Third-party servers are not unusual
components of a web site's architecture--small businesses often run web
sites that are hosted off-premises--and this remark is hardly a revealing or
accurate description of business practices, attitudes or vitality. The comment, however, underscores the court's estimation of the case.
3. Spanish law identifies a "dominant" word in a complex trademark and
gives pre-emptive rights of ownership to the party that registered the word
first. In this case, that party would be the City Council of Barcelona,
as it already owns trademarks that have the word Barcelona in them. Moreover,
Spanish municipalities, cities and towns have the sole authority to approve
the use of their names in a domain name--approval which Nogueras had not
received from the representatives of Barcelona.
Spanish trademark law, if applied wholesale, seems dispositive in this case,
and perhaps rightly so. If the domain name is treated as a piece of property,
then it is properly Spanish property. Moreover, the two parties with the
greatest interest are a Spanish government and a Spanish citizen--Spain's
interest thus outweighs that of the United States, and a government interest
analysis would therefore approve of deference to foreign law.
4. Nogueras has no intellectual property rights to Barcelona.com.
Nogueras operated a web site for two years. The web site likely has a following,
and he is likely to have developed relationships with customers and other
businesses, all of which will rupture if he loses control of the domain name.
Nogueras has at least some interest in the domain name.
More importantly, neither Nogueras nor the City Council, neither in the
United States nor in Spain, has registered Barcelona.com as a trademark.
Under American law, then, it would appear that neither party has a special
claim to the domain name. And it would appear that Nogueras' operation of
Barcelona.com did not in itself violate any American laws. Since Nogueras
registered over 100 domain names, however, he broke American anticybersquatting
laws. And by registering as a domain name--and without authorization--the
name of a Spanish city, and by appropriating a part of a complex trademark
that rightfully belonged to another party, Nogueras broke Spanish laws, too.
Which means that both governments have legal argument with which to strip
Nogueras of the domain name's ownership and transfer it into the hands of
the City Council of Barcelona.
Original post
at ICANNWatch.
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