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Barcelona.com, Incorporated v. Excelentisimo Ayuntamiento de Barcelona

United States Court of Appeals, Fourth Circuit
330 F.3d 617 (2003)
ELI5:

Rule of Law:

In an action for reverse domain name hijacking under the Anticybersquatting Consumer Protection Act (ACPA), a United States court must apply United States trademark law (the Lanham Act), not foreign law, to determine whether the domain name registrant's use of the name is unlawful.


Facts:

  • In 1996, Joan Nogueras Cobo, a Spanish citizen, registered the domain name with Network Solutions, Inc., a registrar based in Virginia.
  • Nogueras later formed Barcelona.com, Inc. ('Bcom, Inc.'), a Delaware corporation, to own the domain and develop it into a tourist portal for the city of Barcelona, Spain.
  • Before developing a full business plan, Nogueras e-mailed the mayor of Barcelona proposing to negotiate the City Council's acquisition of the domain name, but he received no response.
  • The City Council of Barcelona, Spain, owned approximately 150 trademarks in Spain that included the word 'Barcelona,' but it did not own a trademark for the word 'Barcelona' alone and admitted to owning no trademarks in the United States.
  • In May 2000, a lawyer for the City Council sent a letter to Nogueras demanding the transfer of the domain name.
  • Shortly after receiving the demand, Nogueras formally transferred the domain name's registration from his wife's name to the corporate entity, Bcom, Inc.

Procedural Posture:

  • The City Council of Barcelona filed an administrative complaint against Bcom, Inc. with the World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP).
  • The WIPO panelist ruled in favor of the City Council and ordered the transfer of the domain name.
  • To prevent the transfer, Bcom, Inc. filed this action in the U.S. District Court for the Eastern District of Virginia, seeking a declaratory judgment under the ACPA that its registration was not unlawful.
  • The City Council answered the complaint but did not file a counterclaim.
  • Following a bench trial, the district court denied Bcom, Inc.'s requested relief and ordered the transfer of the domain name to the City Council.
  • Bcom, Inc., as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Fourth Circuit.

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Issue:

Does the Anticybersquatting Consumer Protection Act (ACPA) require a U.S. court to apply U.S. trademark law, rather than foreign trademark law, when determining if a domain name registrant's use of a domain is 'not unlawful'?


Opinions:

Majority - Niemeyer

Yes. An action filed under the Anticybersquatting Consumer Protection Act's (ACPA) reverse domain name hijacking provision, 15 U.S.C. § 1114(2)(D)(v), requires the court to determine whether the registrant's use of the domain name is 'not unlawful under this chapter,' which explicitly refers to the Lanham Act. The plain language of the statute mandates the application of U.S. law. This interpretation is consistent with the fundamental principle of trademark territoriality, under which trademark rights exist only under the laws of each sovereign nation and foreign trademark rights are not enforceable in U.S. courts. Under the Lanham Act, 'Barcelona' is a purely descriptive geographical term that has not acquired secondary meaning and is not entitled to trademark protection in the U.S. Therefore, Bcom, Inc.'s registration and use of is not unlawful.



Analysis:

This decision solidifies the principle of trademark territoriality within the context of the ACPA, clarifying that U.S. courts will not enforce foreign trademark rights in reverse domain name hijacking actions. It establishes that the legality of a domain name's registration and use is judged exclusively under the standards of the Lanham Act. This provides a significant shield for U.S. domain name registrants, preventing foreign trademark holders from using their own, potentially broader, national laws to seize domain names registered in the U.S. The ruling ensures a predictable legal standard for cybersquatting disputes brought in American courts.

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