The case is unusual because the US court was hearing arguments from Spanish parties on points of Spanish trade mark law while also applying US law. However, the most controversial issue was the assertion that a local government should have trade mark rights in the name of a city.
A panel of the World Intellectual Property Organisation (WIPO) first considered the dispute in August 2000. Concepcio Riera, a Barcelona resident, registered the domain name barcelona.com in 1996. When the City of Barcelona demanded the name in early 2000, she transferred the name to a US-based company, Barcelona Inc., operated by her and her husband. The web site was a portal offering news and tourism information on the city.
The WIPO arbitrator did not consider this portal constituted evidence of a legitimate right to the domain name. The arbitrator also said that the name was being used in bad faith:
"...it is obvious that the main and only purpose of such plan is to commercially exploit information about the city of Barcelona in Spain and its province, particularly, using the information prepared and provided by [the city] as part of its public service."
The arbitrator suggested that it is reasonable to assume that anyone using the address Barcelona.com "would normally expect to reach some official body or representative of the city of Barcelona itself."
The WIPO decision was, in effect, appealed to a court by the original owners of the name, as is possible under WIPO's rules. The case went to a district court in Virginia.
On 22nd February, Judge Claude Hilton supported the original WIPO ruling. He noted that the City did not actually have a trade mark registration for the word "Barcelona". However, he considered that the City's registration of various marks including the word "Barcelona" gave it certain rights over the single word, despite place names being generally ineligible for trade mark protection.
Hilton wrote:
"Under Spanish law, when trade marks consisting of two or more words contain one word that stands out in a predominant manner, that dominant word must be given decisive relevance."
However, the US Court of Appeals for the Fourth Circuit reversed the WIPO and district court decisions, reasoning that Judge Hilton had "neglected to apply United States law as required by [the Lanham Act of 1999]", an Act which deals with US trade mark law.
The Appeals Court came to the conclusion that "Under the Lanham Act, and apparently even under Spanish law, the City Council could not obtain a trade mark interest in a purely descriptive geographical designation that refers only to the City of Barcelona."
In this case there was "no evidence that the public — in the United States or elsewhere — associates 'Barcelona' with anything other than the City itself."
The domain name Barcelona.com was not an abuse of trade mark and should not therefore be transferred to Barcelona City Council.
The full opinion of the Court of Appeals is available at - http://pacer.ca4.uscourts.gov/
opinion.pdf/021396.P.pdf