## Facts

- In 1996, a Spanish citizen registered the domain name barcelona.com through a U.S. registrar located in Virginia.
- The registrant launched a website in 1997 providing city-related information and services and later planned a commercial tourism portal.
- In 1999, the registrant and a partner formed Barcelona.com, Inc., a Delaware corporation, to own and operate the domain and website.
- The registrant approached the City Council of Barcelona to negotiate over the domain name; the City Council later demanded transfer by cease-and-desist letter.
- The domain name was transferred to Barcelona.com, Inc., and the registration information was changed to a U.S. address.
- The City Council relied on Spanish trademark registrations consisting of multi-word marks that included the term “Barcelona.”
- In a UDRP proceeding administered by WIPO, a panel ordered transfer of the domain name to the City Council.
- Barcelona.com, Inc. filed suit in the Eastern District of Virginia under 15 U.S.C. § 1114(2)(D)(v) seeking a declaration that its registration and use were not unlawful under the Lanham Act.
- The district court applied Spanish trademark law, found confusing similarity and bad faith, and ordered transfer of the domain name to the City Council.

## Issues

1. In an action under 15 U.S.C. § 1114(2)(D)(v), must “unlawful under this chapter” be determined exclusively under the Lanham Act rather than foreign trademark law?
2. Under U.S. trademark law, did the City Council have protectable rights in the geographic term “Barcelona” sufficient to make barcelona.com unlawful to register or use?
3. If the City Council lacked a qualifying U.S. mark, could findings of registrant “bad faith” support a Lanham Act violation under the ACPA?
4. Whether the City Council was subject to personal jurisdiction in Virginia based on its UDRP filing and related forum-directed conduct.

## Decision

- The Fourth Circuit reversed the judgment denying relief to Barcelona.com, Inc., vacated the district court’s opinion and transfer order, and remanded.
- The court held § 1114(2)(D)(v) requires an independent federal determination under U.S. trademark law; the district court erred by applying Spanish law.
- The court concluded the City Council did not show protectable U.S. trademark rights in “Barcelona” as a standalone geographic term for the relevant services.
- Because there was no qualifying distinctive or famous mark under U.S. law, ACPA “bad faith” considerations could not establish unlawfulness.
- The court confirmed personal jurisdiction over the City Council based on its initiation of domain-name proceedings tied to the forum and other contacts.

## Legal Principles

- A § 1114(2)(D)(v) action turns solely on whether the registrant’s domain-name registration or use is “not unlawful under” the Lanham Act; foreign trademark law does not supply the rule of decision.
- UDRP outcomes do not bind federal courts in subsequent Lanham Act litigation; the court must conduct an independent analysis under U.S. law.
- Geographic terms generally are not protectable as trademarks for goods or services associated with that place absent a sufficient showing of secondary meaning and related requirements.
- Under the ACPA, a cybersquatting theory requires a qualifying protected mark; “bad faith” alone cannot substitute for the absence of a distinctive or famous mark.
- Initiating domain-name proceedings and directing enforcement activity connected to a forum can support personal jurisdiction in a federal action challenging a transfer.

## Conclusion

The Fourth Circuit held that a registrant may use § 1114(2)(D)(v) to overturn a domain-name transfer ordered through UDRP when, under the Lanham Act, the complainant lacks protectable U.S. rights in the asserted mark; applying foreign trademark law to determine “unlawfulness” is error, and the geographic term “Barcelona” did not give the City Council a basis to seize barcelona.com under U.S. law.


Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003)