Monday, June 02, 2003
Cybersquatting judgment in favor of the City of Barcelona, Spain over "barcelona.com" reversed for failure to apply the Lanham Act
In Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, the Fourth Circuit in an opinion by Judge Niemeyer, joined by Judges Motz and Wilkinson, reversed the district court's judgment against the plaintiff who brought suit challenging a ruling under the Uniform Domain Name Dispute Resolution Policy ("UDRP") obtained by the defendant regarding the legality of plaintiff's registration and use of "barcelona.com." The Court concluded that the trial court erred when it applied Spanish law rather than the Lanham Act and when it based, in part, its order requiring plaintiff to transfer the domain name on a counterclaim that the City Council never filed. Applying the Lanham Act, the Court noted that the defendant "could not obtain a trademark interest in a purely descriptive geographical designation that refers only to the City of Barcelona."