RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Decision

["Michael D. Palage" <michael@palage.com>]

Richard,

After my first reading of the decision I tend to agree with your analysis.

When the City Council decided to file the UDRP they consented under
3(b)(xiii) of the UDRP Rules to "submit, with respect to any challenges to a
decision in the administrative proceeding canceling or transferring the
domain name, to the jurisdiction of the courts in at least one specified
Mutual Jurisdiction" Mutual jurisidiction is defined under the Rules as "a
court jurisdiction at the location of either (a) the principal office of the
Registrar (provided the domain-name holder has submitted in its Registration
Agreement to that jurisdiction for court adjudication of disputes concerning
or arising from the use of the domain name) or (b) the domain-name holder's
address as shown for the registration of the domain name in Registrar's
Whois database at the time the complaint is submitted to the Provider."

Therefore, the City Council could have initiated legal proceedings against
the domain name registrant in Spain under Spanish law. Instead, they choose
the UDRP and the registrant exercised the mutual jurisdiction provision
under the Rules. You will note procedurally in the opinion, that the City
Council raised jurisdictional challenges to the domain name registrant's
other claims.

I think the Court of Appeals got it right, and should the City Council
obtain a judgment in Spain then things could get a little more interesting.
However, what people forget is that there is already an existing body of law
on how to handle this situation.

Unfortunately there are going to be a lot of arm chair
"lawyers/quarterbacks" attempting to read more into this decision than there
is. The one thing that I have gained increased knowledge of over the years
is that legal system does not have to be rewritten because of the Internet.
There will have to be some tweaks, but the legal system has been able to
assimilate its existing body of law to handle other technology developments
over time.

Just my two cents for what it is worth.

Mike






> -----Original Message-----
> From: owner-ga@dnso.org [mailto:owner-ga@dnso.org]On Behalf Of
> richard.hill@itu.int
> Sent: Tuesday, June 03, 2003 6:03 AM
> To: john@johnberryhill.com; ga@dnso.org
> Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> Decision
>
>
> Under US law, says the US court.
>
> But what about Spanish law?  Not applicable in US court, because
> of ACPA and
> the general principle of territoriality of trademark law, says
> the US court.
>
> However, I suppose, the City Council of Barcelona could bring an action in
> Spanish courts, under Spanish law, if it felt that the activities
> exercised
> under the disputed domain name were violating Spanish law in Spain.
>
> If such an action suceeded in Spain, then the question of whether
> or not the
> Spanish court's decision could be enforced in the US is probably a
> complicated question.
>
> Best,
> Richard Hill
>
>
>
> > -----Original Message-----
> > From: John Berryhill Ph.D. J.D. [mailto:john@johnberryhill.com]
> > Sent: Monday, 02 June 2003 22:43
> > To: [GA]
> > Subject: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> > Decision
> >
> >
> >
> > As if anyone needed to know, "Barcelona" is not a trademark
> > of the City of
> > Barcelona:
> >
> > http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf
> >
> >
> > It looks like an update will be needed here to avoid false
> > advertising:
> > http://www.oblon.com/barcelona/
> >
> >
> >
> >
> >
> >
> > --
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