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The battle for recognition on the Internet sometimes takes funny turns. The musician Sting was unable to evict “sting,” the Internet gamer, from the sting.com Web site (which the musician has subsequently acquired). Sting had not trademarked his name, and the other “Sting” got there first. Apparently Sting, a professional wrestler, never got into the ring on this one. A Web site name can also create problems if it’s based on geography. The U.S. District Court for the Eastern District of Virginia recently confirmed a ruling by the World Intellectual Property Organization (WIPO) arbitration panel that forced a U.S. Web site owner to give back a domain name to the city of Barcelona, Spain. The Internet Corporation for Assigned Names and Numbers, better known as ICANN, resolves Web site name disputes through arbitration under its Uniform Dispute Resolution Policy. In August 2000, an arbitrator from WIPO, one of three organizations approved to provide arbitrators, directed an American husband and wife to give up their Web site, barcelona.com. The arbitrator ruled in favor of the Barcelona City Council and told the couple, Concepcion Riera Llena and her husband, Joan Nogueras Cobo, to transfer barcelona.com to the council. The ruling was controversial. Neither party held a trademark in the name, but both had applications pending during the proceeding. Llena and Cobo had owned the name for their site since it began operating in 1996 as a travel portal. The Web site started out as a personal interest of the couple to provide information about Barcelona, and other cities in the world named Barcelona. As the site grew, it became a business that consumers may have mistaken as an official site for the city. What Llena and Cobo could not have realized in 1996 when they bought rights to the Barcelona Web name was that ICANN, a body of arbitration decisions and case law would render their business subject to the city about which they were drawing tourists. The case thus points up the dangers of building a business on the shifting sands of Internet law. As a result of the convergence of international law, multiple trademark regimes wedded to a specific country and the possibility that without trademark protection, both in the United States and in the country of the Web site’s namesake, you may become the victim of local politics. The barcelona.com site had become a real business, growing in four years to become a tourism portal that got a substantial number of visitors. The couple lost with the arbitrator, but because the city had submitted to jurisdiction in Virginia for the arbitration, the U.S. District Court for the Eastern District of Virginia took charge of the dispute. That did not help the couple. The site’s claim to fame was not its creator, but its name, said U.S. District Judge Claude Hilton in his ruling. He said that Web surfers might believe that barcelona.com was an official government site. Hilton also was not impressed by the fact that the couple offered their barcelona.com address to the city officials in 1999, in his words, to “extract” money from the city including offering a business plan that “grossly exaggerated the value of the Barcelona.com business prospects.” This a second lesson from the case: It’s not wise to attempt to sell the Web site to the city, county, state or country that you are promoting. Bolstered by this decision, municipalities and other governments may be more likely to seize ownership of Web sites carrying their name, even if those sites were made famous by private operators. For example, Germany recently recovered the domain name deutchland.de. The case also shows again that because of ICANN’s base in the United States and the location of its primary domain name database registry in Herndon, Va., a significant body of case law has developed within the “rocket docket” of that court resolving Internet disputes and being the beachhead against which the changing tide in Internet law will be assessed. And U.S. Web site owners should not seek protection solely from U.S. law. Hilton’s decision on barcelona.com focused heavily on the fact that Spanish trademark law provides that when trademarks consist of two or more words but one word “stands out in a predominate manner, that dominant word must be given relevance.” The judge gave considerable weight to the fact that the Spanish city held trademarks in Spain for phrases containing the word Barcelona. He also noted that trademarks for Spanish communities and municipalities cannot be registered without the authorization of municipal authorities. This leaves open the question of whether barcelona.com would have been upheld had the U.S. couple obtained authorization from the city for a trademark. In fact, the U.S. couple had applied for the trademark “barcelona.com” in June 2000, less than a month after the Barcelona City Council had filed its complaint with ICANN. So be careful where you reside on the Internet, or, like Gertrude Stein, you may some day return home and discover that, as it was with her in Oakland, there is no there there. Scott Austin advises software development, e-commerce and high-technology companies as a partner in the Boca Raton, Fla., office of Adorno & Yoss. He can be reached at [email protected].

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