Barcelona.Com, Incorporated v. Excelentisimo Ayuntamiento De Barcelona

330 F.3d 617 (4th Cir. 2003)

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Nature of the Case

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Facts

Nogueras, a Spanish citizen, registered the domain name barcelona.com with Network Solutions, Inc., in Herndon, Virginia. Nogueras and Hanif, a British citizen, developed a business plan to turn barcelona.com into a tourist portal for the Barcelona, Spain, region. They formed P under Delaware law. P has no employees in the United States, does not own or lease office space in the United States, and does not have a telephone listing in the United States. Its computer server is in Spain. When Nogueras registered the domain name barcelona.com in 1996, he placed some Barcelona-related information on the site. The site offered commercial services such as domain registry and web hosting but did not offer much due to the lack of financing. Before developing the business plan with Hanif, Nogueras e-mailed the mayor of Barcelona, Spain, proposing to 'negotiate' with the City Council for its acquisition of the domain name barcelona.com, but Nogueras received no response. Nogueras was unable to secure financing to develop the website. In March 2000, the City Council contacted Nogueras to learn more about P and its plans for the domain name barcelona.com. They were sent the business plan. On May 3, 2000, D sent a letter demanding the transfer of the domain name. D already owned about 150 trademarks issued in Spain which contained Barcelona in them but D was denied Barcelona. Com. D now claimed that barcelona.com was confusingly similar to numerous trademarks that it owned. P refused and D invoked the Uniform Domain Name Dispute Resolution Policy (UDRP) promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN). D filed an administrative complaint with the World Intellectual Property Organization (WIPO). WIPO issued a ruling in favor of D; Barcelona.com was confusingly similar to D's trademarks. and P had no legitimate interest in barcelona.com, and P's registration and use of barcelona.com was in bad faith. D filed an administrative complaint with the World Intellectual Property Organization (WIPO). WIPO issued a ruling in favor of D; Barcelona.com was confusingly similar to D's trademarks. and P had no legitimate interest in barcelona.com, and P's registration and use of barcelona.com was in bad faith. The WIPO panelist observed that the only purpose of the business plan was 'to commercially exploit information about the City of Barcelona. WIPO ordered P to transfer the domain name to D. P filed this action as permitted by the UDRP under the ACPA. P sought a declaratory judgment that its use of the name barcelona.com 'does not infringe upon any trademark of D or cause confusion as to the origin, sponsorship, or approval of the website barcelona.com. The district court denied P's request. The court applied the WIPO panelist opinion as well as Spanish law. P appealed. P contends that it was entitled to have its conduct judged by U.S. trademark law, not Spanish trademark law. Under Spanish law, a party cannot get a registration for a term that is only geographically descriptive, such as the word Barcelona. D maintains that the district court's conclusions of confusing similarity and bad faith were factually supported and justified and that a 'failure to consider the basis for the WIPO decision would remove the basis for the court's jurisdiction,