Generic Top Level Domain Name (gTLD) Decisions

WIPO Arbitration and Mediation Center

The complainant is:
EXCELENTISIMO AYUNTAMIENTO DE BARCELONA with an address at:
Plaça San Miquel 4-5, in Barcelona, Spain.

The respondent is:
BARCELONA.COM, INC., with an address at:
210, 1173A, Second Avenue
New York, N.Y.10021

The Domain Name that is the subject of this complaint is:

"barcelona.com"

The above listed domain name was registered with Networks Solutions, Inc. on February 21, 1996.

Original Registrant was Ms. Concepcio Riera, of Sant Vicenc de Montalt, Barcelona.

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy" or "The Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"), was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on May 26, 2000, and followed by the paper original and corresponding annexes.

An acknowledgement of receipt was sent by the WIPO Center to the Complainant, by facsimile and e-mail dated May 30, 2000.

On June 6, 2000, the WIPO Center transmitted via e-mail to Network Solutions, Inc. a request for Registrar verification in connection with this case. On June 8, 2000, the Registrar confirmed by e-mail to the WIPO Center having received a copy of the Complaint and the fact that Respondent, Barcelona.com, Inc., was the current registrant of the domain name at issue; that the name was "active" and that the contacts for such name, administrative, technical and billing purposes were Mr. Joan Nogueras Cobo and Ms. Concepcio Riera, both with address at Sant Vicenc de Montalt, Barcelona, Spain.

On June 6, 2000, the WIPO Center sent by e-mail to Complainant a Complaint Deficiency Notification, to be amended within the statutory term of five days.

Notification to Respondent

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and Uniform Rules, the WIPO Center issued to Respondent on June 9, 2000, a Notification of Complaint and Commencement of Administrative Proceedings (including a copy of the filed Complaint), to both the postal and e-mail address of the Respondent and to the facsimile of the Respondent's Contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.

On July 6, 2000, Complainant sent to the WIPO Center a new document requesting to have it considered together with the complaint.

On July 6, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Marino Porzio.

A. Complainant

Complainant has demonstrated to be the legal owner, among others, of the following trademarks, all registered in Spain:

"BARCELONA"

Execelentísimo Ayuntamiento de Barcelona (3.10.1995), class 35

"BARCELONA"

Excelentísimo Ayuntamiento de Barcelona (3.10.1995), class 38

"BARCELONA"

Execelentísimo Ayuntamiento de Barcelona (3.10.1995), class 42

"BARCELONA"

Excelentísimo Ayuntamiento de Barcelona (3.10.1995), 39 separate registrations in each of the following classes of the International Classification: 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 39, 40, and 41.

"BARCELONA-BCN" (20.11.1996), class 35.

"BARCELONA-BCN" (20.11.1196), class 38.

"BARCELONA-BCN" (20.11.1996), class 42.

In addition, Complainant has proven to be the title owner of approximately 1000 trademarks, registered in Spain and covering the whole spectrum of the International Classification, many of which contain the expression BARCELONA, such as, "B...de BARCELONA", "TEATRE BARCELONA", "BARCELONA INFORMACIO I GRAFIC", "BARCELONA INFORMACIO 010 EL TLEFON QUE HO CONTESTA TOT", "BARCELONA 92", "BARCELONA 92; CON CINCO OVALOS", "BARCELONA ESPECTACLES", "FESTIVAL INTERNACIONAL DE MUSICA DE BARCELONA", "LA CLAU DE BARCELONA", "LA MUNICIPAL DE BARCELONA", "BARCELONA I TU", "CANAL BARCELONA", "TELEVISIO BARCELONA", "TVB TELEVISIO BARCELONA","BARCELONA TV", "FREQUENCIA BARCELONA", and many others. These registrations bear dates ranging from 1984 onwards.

Finally, Complainant has proven to have pending applications in Spain, for the registration of the following trademarks: "BARCELONA.COM", in classes 35 and 38; "BARCELONA.NET", classes 35 and 38; "BARCELONA ORG", classes 35 and 38; "BARCELONA.EDU", in classes 35 and 38 and "BARCELONA.ES", in classes 35 and 38.

B. Respondent

Respondent has proven to be the current title holder of domain name BARCELONA.com since, apparently, May 10, 2000. This Domain Name was originally obtained, in February 1996, by Ms. Concepcio Riera Llena.

Subsequently, in May 2000, the Domain Name was transferred to Respondent, a wholly owned company of the same Ms. Concpcio Riera and her husband, Mr. Juan Nogueras Cobo.

In addition, Respondent has proved to have filed, on June 15, 2000, an application with the United States Patent and Trademark Office, for the registration of Trademark BARCELONA.Com, class 38.

Complainant

Complainant contends that the Domain Name at issue is identical to several of Complainants’ registered trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that such Domain Name was registered and used in bad faith.

A number of arguments are developed by Complainant for justifying the above mentioned contentions and ample evidence has been filed in support of these arguments.

Consequently, Complainant requires the transfer of the Domain Name to Complainant.

Respondent

Respondent has rejected Complainant’s contention as to the identity or similarity of Complainant’s trademarks and the Domain Name at issue, has also objected to Complainant’s accusation of bad faith. In the latter respect Respondent has stated that the Administrative Panel should make a finding to the effect that this is a case of "reverse domain name highjacking".

In addition, Respondent has developed a number of arguments to demonstrate that the Spanish city of Barcelona is only one among many bearing such name to which the Barcelona City Government has no monopoly. It has further given ample explanations as to the scope of its actual and planned activities in connection with the Domain Name at issue and has filed ample evidence in support of the several arguments contained in the Response.

Respondent has finally requested the Administrative Panel to deny the remedies requested by Complainant.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

1) that the domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2) that the registrant of the domain name at issue has no rights or legitimate interests in respect of the domain name; and

3) that the domain name at issue has been registered and is being used in bad faith.

Identity or confusing similarity of domain name and trademarks

Respondent has stated that Domain Name "BARCELONA.COM" and Complainants trademarks "BARCELONA EXCELENTISIMO AYUNTAMIENTO DE BARCELONA" and "BARCELONA–BCN" are neither identical nor confusingly similar.

In order to compare the above cited trademarks with the Domain Name at issue, in particular the first one, it is necessary to examine more careful the registration or registrations that mark is the subject of, particularly its structure and architecture. In fact, as stated under Chapter 4 above, Complainant has filed copies of forty two registrations of this trademark, all dated March 5, 1996. In each registration certificate the trademark appears mentioned in the following manner:

"BARCELONA"

Excelentísimo Ayuntamiento de Barcelona

However, each of these certificates, in the section intended for the description of the trademark, further states the following: (free translation from Spanish) "This mark consists of the expression "BARCELONA", bearing written below the name of the title holder".

Hence, the Spanish Patent and Trademarks Office when registering this trademark clearly considered that it consisted of one main element, namely the expression "BARCELONA" and another element, of different importance, namely "Excelentísimo Ayuntamiento de Barcelona". It can thus be concluded that although the trademark is composed by several elements, the distinctive character of the same is provided for by expression "BARCELONA".

The conclusion of the above analysis is that the Domain Name at issue and this trademark, although not strictly identical from the material point of view, they are nonetheless similar and, in any case, "confusingly similar", when normal Trademark comparison criteria are applied for their examination.

This Panel draws a similar conclusion when comparing the registered Domain Name "BARCELONA.com" and Complainant’s several registered trademarks "BARCELONA-BCN".

In addition, it is necessary to consider the fact that Complainant has proven to be the owner of a large number of Trademarks having as the principal element the word "BARCELONA", many of which, if subject to the same analysis, would certainly lead to the same result.

Right or Legitimate Interest in respect of Domain Name

The right and legitimate interest of Complainant, the City Government of Barcelona, in expression "BARCELONA", in any manner this expression can legally appear, is evident and does not warrant further discussion. Moreover, the City Government of Barcelona has amply demonstrated this interest through the implementation of a long-standing constant policy of obtaining registration of trademarks, most of them containing the expression "BARCELONA", for the most varied kind of activities it has engaged into. The Complainant has proved in these proceedings to own approximately one thousand of these registrations. In addition, Complainant in the performance of official duties has a permanent recourse to the use of expression "BARCELONA" alone or in combination with other expressions, which will appear only natural and normal from the point of view of the public.

Respondent has claimed as a basis for his right or legitimate interest, the fact of having obtained the registration of Domain Name "BARCELONA" before. 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. However, such right of interest is and will be always subject to the lack of disputes with parties having better rights or more legitimate interests as in this case.

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy contains a list of circumstances which, when present in a particular case, shall constitute evidence of "the registration and use of a domain name in bad faith". After careful examination of the abundant evidence submitted by both parties in the present case, the Panel has found that at least the following of the listed circumstances are totally or partially present in this case:

a) The circumstance provided for in Paragraph 4(b)(iv): "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or product or service on your web site or location"

In the case at issue, Respondent has claimed that the main purpose for having registered the Domain Name "BARCELONA.com", was to develop links between the different cities having the name of Barcelona throughout the world and between the United States of America and Europe. However, according to Respondent Business Plan, filed in these proceedings, it is obvious that the main and only purpose of such plan is to commercially exploit information about the city of Barcelona in Spain and its province, particularly, using the information prepared and provided by Complainant as part of its public service. The latter has been carried to the point that when using the Domain Name at issue through Internet, an automatic connection (in-line link) is made with the information provided by the City Government of Barcelona through their own names. It is evident that with the expansion of Internet, anybody requiring information about the city of Barcelona or its province, will naturally start the search by attempting to locate it through expression "Barcelona". Hence, Respondent is definitely taking advantage of the normal confusion of the public which by using a Barcelona route in Internet would normally expect to reach some official body or representative of the city of Barcelona itself, for providing the information. In this respect, it may be useful to add that for the public at large, when thinking of "Barcelona", the first and only city that is reasonably thought of, is the city of Barcelona in Spain. In fact, the actual importance of this city is such that any other with the same name will have necessarily to use many other elements of distinction since any reverse confusion is completely impossible.

b) The circumstance provided for in Paragraph 4(b)(ii): "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct".

The several justifications provided by Respondent for registering the Domain Name at issue are clear evidence that his conduct in this matter has been designed to prevent Complainant from registering "Barcelona.com" as a domain name.

c) The circumstance provided for in Paragraph 4(b)(i): "circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant in excess of your documented out-of-pocket costs directly related to the domain name".

The above quoted circumstance is partially present in this case. Although it can not be stated that Respondent acquired the domain name "primarily" for the purposes therein contained, it is evident that eventually Respondent planned to obtain some kind of payment from Complainant--naturally quite in excess of "out-of-pocket costs"--when although clearly denying the possibility of "selling" the Domain Name at issue, suggested nonetheless the possibility that Complainant "invest" in Respondent’s Business Plan to develop the Domain Name, through acquiring twenty per cent of the stock.

A number of other facts, attitudes and actions of Respondent since the registration of the Domain Name at issue, which are clearly reflected in Respondent’s response and its annexes, have further contributed to convince this Panel to put in doubt the existence of good faith at the time Respondent obtained the registration of Domain Name "BARCELONA.com" and, in particular, thereafter in the use of such Domain Name.

The Administrative Panel decides that the Complainant has proven each of the three elements provided for in Paragraph 4(a) of the Uniform Policy. Accordingly, the Administrative Panel requires that domain name "barcelona.com" be transferred to Complainant, Excelentísimo Ayuntamiento de Barcelona.

Marino Porzio
Sole Panelist

Dated: August 4, 2000