U.S. law applies in reverse domain name hijacking case

A district court should have applied United States law rather than Spanish law in deciding a domain name dispute involving the barcelona.com domain, the Fourth Circuit held Monday in Barcelona.com Incorporated v. Excelentisimo Ayuntamiento de Barcelona, No. 02-1396 (4th Cir. June 2, 2003),

A U.S. Corporation, Bcom, Inc., refused to transfer barcelona.com to the Barcelona City Council, who wanted the domain name for obvious reasons. The City Council invoked the Uniform Domain Name Dispute Resolution Policy ("UDRP") promulgated by the Internet Corporation for Assigned Names and Numbers ("ICANN") to resolve the dispute.

Domain names are issued pursuant to contractual arrangements under which the registrant agrees to a dispute resolution process, the UDRP, which is designed to resolve a large number of disputes involving domain names.

The UDRP panelist concluded that barcelona.com was confusingly similar to the City Council's Spanish trademarks, that Bcom, Inc. had no legitimate interest in barcelona.com, and that Bcom, Inc.'s registration and use of barcelona.com was in bad faith.

Bcom, Inc. commenced an action on under a provision of the Anticybersquatting Consumer Protection Act (the "ACPA") that authorizes a domain name owner to seek recovery or restoration of its domain name when a trademark owner has overstepped its authority in causing the domain name to be suspended, disabled, or transferred. See 15 U.S.C. 1114(2)(D)(v) (known as the "reverse domain name hijacking provision"). Resort to the Lanham Act for relief is procedurally proper because the UDRP process is "not intended to interfere with or modify any 'independent resolution' by a court of competent jurisdiction."

To establish a right to relief against an "overreaching trademark owner" under the reverse hijacking provision, a plaintiff must establish

(1) that it is a domain name registrant;

(2) that its domain name was suspended, disabled, or transferred under a policy implemented by a registrar as described in 15 U.S.C. 1114(2)(D)(ii)(II);

(3) that the owner of the mark that prompted the domain name to be suspended, disabled, or transferred has notice of the action by service or otherwise; and

(4) that the plaintiff's registration or use of the domain name is not unlawful under the Lanham Act, as amended.

Applying these elements, the district court upheld the panelist's decision. In doing so, it applied Spanish law to resolve the fourth element. Although the district court recognized that the City Council did not have a registered trademark in the name "Barcelona" alone, either in Spain or in the United States, it observed that"[u]nder Spanish law, when trademarks consisting of two or more words contain one word that stands out in a predominant manner, that dominant word must be given decisive relevance."

On appeal, the Fourth Circuit reversed, holding that the district court should not have applied Spanish trademark law at all. "The text of the ACPA explicitly requires application of the Lanham Act, not foreign law, to resolve an action brought under 15 U.S.C. 1114(2)(D)(v)," the Fourth Circuit held. Specifically, it authorizes an aggrieved domain name registrant to "file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter." 15 U.S.C. 1114(2)(D)(v) (emphasis added).

Under United States trademark law, "Barcelona" should have been treated as a purely descriptive geographical term entitled to no trademark protection. See 15 U.S.C. 1052(e)(2). "It follows then" the Court held, "that there was nothing unlawful about the registration of barcelona.com, nor is there anything unlawful under United States trademark law about Bcom, Inc.'s continued use of that domain name."