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US appeals court hands Barcelona.com back to original owner

Finally an end brought to trademark law merry-go-round

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The US Court of Appeals has handed back the domain Barcelona.com to its original owner after three years of protracted, convoluted and insidious legal argument.

The decision on 2 June 2003 "reversed, vacated and remanded" two previous decisions by WIPO and the US District Court and was the first time the law had been applied correctly since Barcelona City Council attempted to relieve Mr Joan Nogueras Cobo - a Spanish citizen living in America - of the domain on 26 May 2000.

The intervening years serve only to highlight that the ownership of Internet domains remains a confused and frequently abused area of law. No one, from Barcelona City Council, to WIPO, to the US District Court comes out of the situation well. And, even more perversely, the final (correct) decision will seem to many laymen to be the wrong one.

Barcelona.com was first bought by Mr Nogueras in February 1996 under his wife's name. He did little with it until he entered into a partnership with British citizen Shahab Hanif in 1999 to turn it into a tourist portal for the city of Barcelona. He had offered to negotiate a sale price with the mayor of Barcelona but never received a reply.

In March 2000, Nogueras and Hanif send a copy of their business plan to the Barcelona City Council. Two months later, they received a legal letter from the council demanding they hand over the domain. They refused and the council filed a complaint with ICANN-approved domain arbitrator WIPO.

Although the UDRP rules used by ICANN domain arbitrators have been used to make unjustifiable decisions in the past, the decision by single panellist Marino Porzio to award the domain to Barcelona City Council, has the rare honour of being up there with the very worst.

Using the kind of biased language that no one likes to see in an official judgement, Mr Porzio created for himself a new concept of "better rights or more legitimate interests" in a domain name. With some panache, he also decided that Mr Nogueras' conduct "has been designed to prevent Complainant from registering 'Barcelona.com' as a domain name" - a creative review of the facts.

Mr Nogueras' explanation of the structure of the Internet and the domain name system was nonchalantly dispatched thus: "Respondent has further engaged into lengthy explanations about the Internet system of assignment of domain names of different kinds, presumably to demonstrate the broad right of anyone interested in registering as a Domain Name any expression still available."

He lost, and rightly feeling cheated, applied to the US courts, as was his right, to overturn the decision, made on 4 August 2000. The US District Court under Chief District Judge Claude M. Hilton heard the case exactly one year and one day later.

Then, in what can only be described as a monumental cock-up, Judge Hilton went on to use the WIPO decision as the basis of his decision - despite earlier saying it may be disregarded entirely - wrongly apply Spanish trademark law in a US court by misreading a new amendment to US law, then get Spanish trademark law wrong. He decided for Barcelona City Council.

Again, Mr Nogueras felt rightly cheated and appealed against the decision. And on 28 February 2003, the Court of Appeals finally heard the case.

The final decision by circuit judges Wilkinson, Niemeyer and Motz overturned the whole thing, pointing out that WIPO was wrong, that the Barcelona City Council had behaved appallingly and that Judge Hilton didn't know his arse from his elbow.

It also mentioned that the Barcelona City Council had failed in an effort way back in 1995 to take the Spanish domain Barcelona.es. At that time it did not try to register the still-available Barcelona.com domain because "it was not seen as a priority by the Council".

But, hang on, you say, surely it makes sense that the city of Barcelona should have the domain name Barcelona.com and not some Spanish citizen living in the US. And how come is it the US courts get to decide anyway?

Well, it's all to do with history and this will (hopefully) be but a strange short period of the Internet's life. All .com domains are run by a US company and ultimately have US law apply to them. Before you go to the law courts however, there is the pseudo-law practised by ICANN under its flawed UDRP rules. At the start of the Internet .coms ruled the waves and they still hold huge influence.

But - and here's the good news - as the Internet become more a part of the lives of millions of people worldwide, the so-called country-code domains like .uk for Britain and .es for Spain are becoming more and more important.

Countries also tend to apply their own rules and laws on who can own their domains. So (unless the power-hungry US-based ICANN has its way), the Barcelona.com fiasco will serve only as a historical aberration and the weak-willed and jelly-headed judgements over domain names will be a thing of the past. Well, here's hoping. ®

Related story
Court rules against barcelona.com

Related links
Poor WIPO decision
Poor US District Court decision [pdf]
Correct US Appeals Court decision [pdf]

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