Spanish city council faces US lawsuit over domain name

A Spanish city council faces a US court battle over the domain name Barcelona.com. Following a decision by one of the domain arbitration bodies to award Barcelona.com to the Barcelona City Council, the domain name’s owner, Barcelona.com Inc, filed a lawsuit in the Virginia courts against the Council on August 18

(http://www.domainbattles.com/lawsuit3.htm). This prevents the immediate transfer of the domain name. The company has said it will continue to operate its business from the web site.

The World Intellectual Property Organization, WIPO, one of the four arbitration organisations now dealing with domain name disputes, ruled August 10 that the City Council had “better rights” to and “more legitimate interests” in the name Barcelona.com than the company. But the arbitrator’s criteria are not to be found anywhere in the Uniform Domain-Name Dispute Resolution Policy (UDRP), a policy supposedly applied to all domain disputes by every arbitrator.

Dr. Alejandro Pisanty, a professor at the Mexican university UNAM and a member of the executive board of ICANN, is sitting on the fence as far as the decision is concerned, but said in a letter to the domain name owners that the experience of barcelona.com will be “of great importance in identifying possible defects and faults in the system” for policing domain names. Other ICANN executive board members are reported to be “looking at the case”.

Karl E. Peters of the legal committee of the Association for Domain Owner Rights (http://www.ador-doc.org) stated that the organisation had decided, for the first time in its history, to launch an appeal fund to help pay Barcelona.com’s US legal costs.

[The decision] appears to be a classic case of misuse of power,” said Mr Peters. His organisation, representing thousands of small domain owners, plans to use the case as a ‘poster child’ in order to “set a precedent for future cases” and “start to bring some sanity” to the present mess. The battle is likely to be a long one: the City Council’s lawyers, PricewaterhouseCoopers, are quoted as saying they will “appeal the appeal” if necessary.

Several thousand companies have built a business around geographic domain names. Boston.com is owned by the US newspaper the Boston Globe; the Irish Timespublishes information at Ireland.com, Boulevards New Media writes about alternative culture at SanFrancisco.com and the US company Mail.com owns dozens of city domain names, including Berlin.com, Madrid.com and Dublin.com, all used to provide vanity e-mail addresses.

The biggest Web name of all, Amazon.com, would have to hand over its largest cyber-asset to a regional government in Brazil if the arbitrator’s criteria were applied to its domain name.

Marino Porzio, the Chilean government adviser and former WIPO deputy director general acting as arbitrator in this case, argued in his decision that people looking for information about Barcelona “would normally expect to reach some official body or representative of the city of Barcelona itself” at Barcelona.com, so the mere use of the domain name was a demonstration of bad faith. It is unclear whether Mr Porzio has ever used the Web.

Further evidence of bad faith, according to Porzio, was the council’s inquiry about investing in Barcelona.com, as it was “evident” that the domain owner planned to obtain payment from the council by providing the council with a business plan when requested. Internet entrepreneurs will have to be more careful who they send their business plans to, according to Mr Porzio.

Michael Geist, a cyberlaw specialist at the University of Ottawa, Canada, said that the notion that surfers would mistake a dot-com address for the official site of a government organisation was “nonsense.”

“The dot-com space is commercial. I can’t believe that many people would expect to find the official site at that domain. If anything, one would expect the Barcelona.es to be the official site as the country code domain, not Barcelona.com.”

In fact it is difficult to find any other city in the world that has a dot-com as its domain name. In the US, government organisations use the .gov suffix, in the UK all public organisations are registered as .gov.uk and in Australia the administration uses gov.au, while in France cities use .fr domains and a special prefix meaning ‘city hall’. These denominations make it clear that the content is provided by a government.

In Spain, the system is more confused, as the government has not established any naming system for the .es top level domain. Consequently, chaos reigns. But most Spanish city councils use an abbreviation for ‘ayuntamiento’ with .es domain names, such as ayto-valencia.es for Valencia City Council.

Ellen Rony, co-author of “The Domain Name Handbook: High Stakes and Strategies in Cyberspace” (http://www.domainhandbook.com ), says the decision is “wrongheaded and particularly troublesome”.

“There are far too many Internet users, and too many co-existing and legitimate uses for identical words, to justify transfer of a domain registration on the basis of a ‘presumption’ about what a person expects to find at that name,” according to Rony.

“‘Barcelona’ could be a surname, a product or a service unrelated to the city itself. A quick search of the US Patent and Trademark Office trademark database alone finds 11 active federal registrations for the word “Barcelona”. These trademarks are associated with computer software, furniture, clothing, ceiling fans, restaurant services, soft drinks, processed nuts and flatware, says Rony. Hundreds more can be found on trademark databases in other countries, while in Spain itself there are thousands.

There are numerous government organisations in Spain, and thousands of companies,with the word ‘Barcelona’ in their title. But neither they nor the City Council have an exclusive trademark on the word ‘Barcelona’. In fact, according to Spanish law, geographical names cannot be trademarked. The City Council’s Spanish trademarks are for expressions including the word Barcelona, not for the word Barcelona itself.

Barcelona.com Inc and the Barcelona City Council were not strangers before the current case. The Council claimed in its complaint that it has only just considered setting up a web site, only to find that ‘its’ name had been taken. However, the Council launched its own web city portal site, bcn.es, in July 1995, later linking to Barcelona.com, which it described as a “useful site”. Since then, the Council’s site has received substantial funding from the European Union’s Gala Project, according to its web manager, Adela Alos Moner.

The Council also owns more than thirty other domain names, only three of which include the word ‘Barcelona’. It has not, however, registered the national level domain name barcelona.es: the registration of geographical domain names is forbidden under Spanish law.

This spring, Mr. Novoa, an employee of Council-run company Informació i Comunicació de Barcelona, approached Barcelona.com, stating that the Council was interest in investing in the .com project. Shortly afterwards, the Council’s Mr Albert Broggi i Trias asked for a business plan.

But this spring the Council turned the tables. It filed trademark applications with the Spanish Trade Mark and Patent Office identical to domain names belonging to other organisations, including Barcelona.net, Barcelona.org, Barcelona.edu and Barcelona.com, and then filed a domain dispute with the WIPO, stating it had the exclusive right to provide tourism information about Barcelona on the Internet.

The Council has also filed trademark applications this spring in the US for ‘Barcelona’ and ‘Barcelona.com’ and in the European Union for ‘Barcelona’, all of which are expected to be rejected.

Ellen Rony believes that the city’s maneuvers look a lot like reverse domain-name hijacking, a claim made by the domain owners in their response to the complaint, which was ignored by the arbitrator.

“Barcelona.com is not a case of domain name registration made in bad faith but one of an ‘official body’ acting as a cyberbully,” she says. Cyberlaw academic Michael Geist agrees.

“The city council worked with this site for some time,” he said, “and clearly someone just thought, ‘Let’s see if we can get the domain ourselves.’ I find the filing for a barcelona.edu trademark, a domain that the City is not entitled to – it is restricted to US educational institutions – particularly instructive.”

“The precedents that are being established are dangerous,” says Geist. “The rights of individual users are not being adequately considered. There has always been a problem with the complainant picking the provider, which leads to forum shopping. The growing number of puzzling decisions suggest that changes need to be made.”

Internet entrepreneur David Castello, who runs the traveler.com web site, says, “decisions such as those by Mr. Porzio only serve to create a new form of abuse.” Castello’s empire includes PalmSprings.com, Acapulco.com and WestPalmBeach.com, all domain names threatened by the ruling. “This kind of logic can label any legitimate business as a cybersquatter and encourage reverse domain name hijacking – which is what the Respondents correctly accused the City of Barcelona of doing.”

Ellen Rony goes further, arguing that ICANN should stop meddling with insoluble problems, and get rid of the UDRP: “Until better tools are devised to allow multiple uses of the same names, UDRP rulings such as this one are certain to inhibit the creativity of online entrepreneurs. ICANN should stick to its specific mandate of ‘technical’ coordination of the domain name system and leave the legal issues between a covetous name claimant and a domain name registrant to the court system.”

But while it has been busy trying to seize other people’s domain names, the Council has failed to protect its own real name. The Network Solutions database reports that a Spanish resident bought the domain name www.ayuntamientodebarcelona.com (Barcelona City Council in Spanish) on 29 January this year, while www.ajuntamentdebarcelona.com, the local Catalan translation of its name, was bought by a Barcelona sex shop, 00sexshop.com, on 18 May. The Council has yet to start complaint proceedings against the owners of these domain names, nor against the owners of the other 640 dot-coms containing the word ‘Barcelona’.

The City Council’s press releases, proudly proclaiming the ‘recovery’ of ‘their’ domain name, are still filling many column inches in the Spanish press, two weeks after the decision. It won’t be long before the next complainant gets on the Barcelona bandwagon, in Spain and elsewhere.

Resources

Barcelona.com Inc US lawsuit:

http://www.domainbattles.com/lawsuit3.htm

WIPO decision

http://arbiter.wipo.int/domains/decisions/html/d2000-0505.html

other articles from the press:

http://www.computeruser.com/news/00/08/16/news17.html

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