Complaint with request for declaratory relief

(1) This action is brought to gain redress for state-law torts committed by defendant and for declaratory relief, pursuant to 28 U.S.C. Sections 2201, in a controversy relating to trademarks under the trademark laws of the United States; the jurisdiction of this court is founded on 28 U.S.C. Section 1331 (federal question), on 28 U.S.C. Section 1338(a) (trademark disputes), 28 U.S.C. Section 1338(b) (unfair competition claim joined with trademark claim) and 15 U.S.C. Section 1114(2)(D)(v) (Lanham Act).

(2) The jurisdiction of this court is also based on the diversity statute, 28 U.S.C. Section 1332(a), as plaintiff is a corporation incorporated under the laws of the state of Delaware and defendant is the city council of the city of Barcelona, Spain and the amount in controversy exceeds, exclusive of interest and costs, the sum of seventy-five thousand dollars.

(3) Plaintiff BARCELONA.COM, INC. is a corporation incorporated under the laws of the state of Delaware.

(4) Defendant EXCELENTISIMO AYUNTAMIENTO DE BARCELONA is the city

Council of the city of Barcelona, Spain, with an address of Placa Sant Miquel, 4-5,

Planta 3a, 08002 Barcelona (Spain).

(5) This Court has personal jurisdiction over defendant pursuant to the Virginia long-arm statute, Va. Code Section 8.01-328.1(A)(1) (Michie 1992), as defendant agreed to submit to the jurisdiction of this Court (because the domain name registrar, Network Solutions, Inc. is located in Herndon, Virginia) in a complaint filed before the World Intellectual Property Organization.

(6) Venue is properly laid in this Court as defendant agreed, in a complaint filed before the World Intellectual Property Organization, to submit to the jurisdiction of this Court.

(7) As background, plaintiff directs the Court to the following excerpt from Sporty’s Farm v. Sportsman’s Market, Inc., 202 F.3d 489 (2nd Cir. 2000) (footnotes omitted):

The Internet (or “World Wide Web”) is a network of computers that allows a user to gain access to information stored on any other computer on the network. Information on the Internet is lodged on files called web pages, which can include printed matter, sound, pictures, and links to other web pages. An Internet user can move from one page to another with just the click of a mouse.

Web pages are designated by an address called a domain name. A domain name consists of two parts: a top level domain and a secondary level domain. The top level domain is the domain name’s suffix. Currently, the Internet is divided primarily into six top level domains: (1) .edu for educational institutions; (2) .org for non-governmental and non-commercial organizations; (3) .gov for governmental entities; (4) .net for networks; (5) .com for commercial users, and (6) a nation-specific domain, which is .us in the United States. The secondary level domain is the remainder of the address, and can consist of combinations of letters, numbers, and some typographical symbols.  To take a simple example, in the domain name “cnn.com,” cnn (“Cable News Network”) represents the secondary level domain and .com represents the top level domain. Each domain name is unique.

(8) The top-level domain for Spain is “.es”.

(9) In May 1995, defendant registered a domain name <bcn.es>.

(10) At the time defendant registered the domain name <bcn.es>, the domain name <Barcelona.com> was available for registration.

(11) Since May 1995, defendant has maintained a website at <bcn.es>.

(12) The website <bcn.es> provides information of particular interest to residents of the city of Barcelona, Spain such as public work projects, traffic conditions, and information on the City Council.

(13) In 1996, Concepcion Riera Llena became interested in starting a commercial website to provide information about the province of Barcelona, Spain, the city of Barcelona, Spain and other cities in the world named “Barcelona”.

(14) On February 21, 1996, Riera Llena registered the domain name <barcelona.com>.

(15) In 1997, Riera Llena launched a website called “Barcelona.com” at <Barcelona.com>.

(16) Since 1997, the website <Barcelona.com> has provided information about the province of Barcelona, Spain, the city of Barcelona, Spain and other cities in the world named “Barcelona”.

(17) In addition to information, the website <Barcelona.com> provides an email service, a chat room, and advertising.

(18) On October 20, 1999, plaintiff Barcelona.com, Inc. was incorporated under the laws of Delaware.

(19) Following the incorporation of Barcelona.com, Inc., Riera Llena transferred the domain name <Barcelona.com> to plaintiff.

(20) Plaintiff invested money and effort in developing and maintaining the <Barcelona.com> website.

(21) For several years, <bcn.es> and <Barcelona.com> peacefully coexisted; in fact until May 2000, defendant’s website <bcn.es> provided a link to plaintiff’s website <Barcelona.com>.

(22) Neither plaintiff nor defendant has a Patent and Trademark Office registration for “Barcelona” or “Barcelona.com”

(23) Plaintiff has filed an application for trademark registration with the Patent and Trademark Office for “BARCELONA.COM”.

(24) Defendant has filed an application for trademark registration with the Patent and Trademark Office for “Barcelona” and “Barcelona.com”.

(25) Plaintiff received no complaint from defendant about the use of the domain name <barcelona.com> or the <barcelona.com> website until May 2, 2000, when plaintiff received a letter from defendant complaining about the domain name.

(26) On May 26, 2000, defendant filed a complaint against plaintiff before the World Intellectual Property Organization Arbitration and Mediation Center seeking transfer of the domain name <barcelona.com> from plaintiff to defendant.

(27) On August 4, 2000, the single panelist of the World Intellectual Property Organization ruled in favor of defendant and ordered the domain name <Barcelona.com> to be transferred to defendant.

(28) The arbitration proceeding before the World Intellectual Property Organization did not allow for objections to conflict of interest on the part of the World Intellectual Property Organization, discovery, or witness testimony.

(29) The proceeding before the World Intellectual Property Organization applied the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers rather than U.S. trademark law.

DECLARATORY JUDGMENT ON TRADEMARK INFRINGEMENT

(30) As the World Intellectual Property Organization panel has required the transfer of the domain name <barcelona.com>, this Court has jurisdiction, under 15 U.S.C. Section 1114(2)(D)(v), to determine if the use of the domain name by plaintiff is unlawful under the Lanham Act, 15 U.S.C. Sections 1051-1127.

(31) No reasonable visitor to <barcelona.com> would believe that it was maintained or sponsored by defendant.

(32) A reasonable internet user would expect to find a site maintained by a municipality in Spain to have the top level domain for Spain of “.es”, which is in fact the top level domain of the website maintained by defendant at <bcn.es>.

(33) A reasonable internet user would not expect to find a site maintained by a municipality to have a top level domain of “.com” as the “.com” domain was designed for commercial users.

(34) A reasonable internet user would not expect to find the domain name <Barcelona.com> to be owned by a municipality as all the major city “.com” names in Spain (e.g., <Madrid.com>, <Seville.com> and <Granada.com>) and in Europe (e.g., <Paris.com>, <London.com> and <Rome.com>) are owned by commercial users rather than by municipalities.

(35) Plaintiff’s use of the domain name <barcelona.com> is a fair or otherwise lawful use of the common geographical name, “Barcelona”.

(36) Under trademark law, a name that is primarily geographically descriptive is regarded as common property and cannot be appropriated as an exclusive trademark.

(37) The word “Barcelona” is registered as a trademark or service mark for a number of goods and services such as nuts, flatware, ceiling fans and furniture.

(38) Plaintiff submits that plaintiff has a defense to a cause of action against plaintiff for any alleged trademark infringement due to the fact that defendant is guilty of laches in failing to complain until May 2000 of plaintiff’s use of the domain name <Barcelona.com>.

(39) Based on the facts set forth in the foregoing allegations, an actual controversy has arisen and now exists between plaintiff and defendant regarding the issue of whether plaintiff’s use of the domain name <barcelona.com> infringes on any trademark owned by defendant or whether plaintiff’s use of the domain name <Barcelona.com> is likely to cause confusion as to the origin, sponsorship or approval of the website <Barcelona.com> and whether defendant is barred by the defense of laches from seeking legal redress against plaintiff for the use of <barcelona.com>.

(40) Plaintiff is uncertain as to its rights with respect to the domain name <barcelona.com> and needs to have the issue resolved.

(41) This action is brought under the provisions of 28 U.S.C. Section 2201 for the purpose of determining a question in actual controversy between the parties.

(42) A judicial declaration is necessary and appropriate at this time in order that plaintiff may determine its rights and duties under the Federal Trademark laws and facts of this case.

FRAUD AND UNFAIR COMPETITION

(43) Plaintiff sues defendant under Virginia law for fraud and unfair competition.

In support of its cause of action against defendant for fraud and unfair competition, plaintiff realleges all previous paragraphs of this complaint.

(44) Plaintiff alleges that once defendant had decided to attempt to obtain the domain name <Barcelona.com> from plaintiff, defendant devised and employed an unfair and fraudulent scheme to obtain the domain name.

(45) As a part of its scheme, on March 31, 2000, a company owned by defendant, Informacio I Comunicacio de Barcelona S.A. Societat Privada Municipal, while falsely claiming to be interested in investing or participating in further development of the <Barcelona.com>, requested plaintiff’s business plan.

(46) Plaintiff provided defendant’s agent, Informacio I Comunicacio de Barcelona S.A. Societat Privada Municipal, with confidential information which defendant turned around and attempted to use against plaintiff in the WIPO proceeding.

(47) The information provided to Informacio I Comunicacio de Barcelona S.A. Societat Privada Municipal was confidential business information which would not have been provided but for the false and fraudulent statements made by Infornacio I Comunicacio de Barcelona S.A. Societat Privada Municipal.

(48) Plaintiff does not know the full extent of the use of its confidential business information by defendant.

TORTIOUS INTERFERENCE WITH A PROSPECTIVE ECONOMIC ADVANTAGE

(49) Plaintiff sues defendant under Virginia law for tortious interference with a prospective economic advantage.

(50) In support of its cause of action against defendant for tortious interference, plaintiff realleges all previous paragraphs of this complaint.

(51) In March 2000, defendant was aware that plaintiff was seeking financing to further develop the <Barcelona.com> website.

(52) Defendant was aware that plaintiff was expecting a letter of intent to extend to plaintiff a multimillion-dollar loan.

(53) Through defendant’s unfair scheme to obtain the domain name <Barcelona.com>, including obtaining confidential business information from plaintiff, plaintiff has been unable to proceed with obtaining financing because of the uncertainty over the right to use the domain name.

ATTORNEY’S FEES

(54) As a result of defendant’s fraudulent, unfair and tortious actions, plaintiff has been required to employ attorneys in order to protect its interest in its domain name <barcelona.com>.

DAMAGES

(55) Defendant’s fraudulent conduct and acts of unfair competition have damaged plaintiff in excess of  $100,000.00.

JURY DEMAND

(56) Plaintiff demands a jury.

PRAYER

WHEREFORE, plaintiff requests that:

(a)    This Court adjudge that plaintiff’s use of the domain name <barcelona.com> does not infringe upon any trademark of defendant or cause confusion as to the origin, sponsorship, or approval of the website, <Barcelona.com>;

(b)   This Court adjudge that defendant is barred from instituting any action against plaintiff for trademark infringement;

(c)    Defendant pay damages in excess of $100,000.00 plus prejudgment and post judgment interest;

(d)   Defendant pay to plaintiff the costs and disbursements of this action, together with reasonable attorney’s fees to be allowed plaintiff by the court; and

(e)    That the Court grant plaintiff such other relief as the Court may deem proper.

DATED: August 17, 2000.

Respectfully submitted,

_______________________

  1. DALE ROBERTSON

Appearing Pro Hac Vice

623 E. St. Charles Street

Brownsville, Texas 78520

Telephone (956) 541-8529

Facsimile (956) 546-0008

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