Subject: GA-DIGEST V1 #1714
From: [email-masked] (GA-DIGEST)
To: [email-masked]

GA-DIGEST            Tuesday, June 3 2003            Volume 01 : Number 1714

----------------------------------------------------------------------

Date: Tue, 3 Jun 2003 12:02:59 +0200 
From: [email-masked]
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

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:[email-masked]]
> 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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------------------------------

Date: Tue, 3 Jun 2003 08:23:49 -0400 (EDT)
From: "Michael Froomkin - U.Miami School of Law" <[email-masked]>
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

Well, only a little complicated, maybe?  trademark is territorial and
always has been.  The Spanish court

1. might not have personal jurisdiction over a US firm marketing to US
clients

2. even if it did, wisely might not exercise it under forum non conveniens

3. even if exercised jurisidiction, would rule about the use of the name
*in spain*

4. injunctive relief would risk hitting the first amendment (cf. Yahoo
case....); damages would fall under well established principles of
enforcement.

5.  Note, however, that any claim in Spain would be a traditional
infringement claim -- NOT a claim for ownership of the domain name.  And
that's exactly as it should be.

On Tue, 3 Jun 2003 [email-masked] wrote:

> 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:[email-masked]]
> > 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/
> > 
> > 
> > 
> > 
> > 
> > 
> > --
> > This message was passed to you via the [email-masked] list.
> > Send mail to [email-masked] to unsubscribe
> > ("unsubscribe ga" in the body of the message).
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> > 
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> 

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U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
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------------------------------

Date: Tue, 3 Jun 2003 14:28:36 +0200 
From: [email-masked]
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

Michael,

Your comments make sense to me.

Re 1, I presume that the Spanish court would have jurisdiction over a US
firm if the US firm markets in Spain to residents of Spain?  Which then
raises another complicated question: "When can it be deemed that an Internet
site is marketing to the citizens of country X?"  That is, what sorts (if
any) of country-specific actions are required?

Best,
Richard

> -----Original Message-----
> From: Michael Froomkin - U.Miami School of Law
> [mailto:[email-masked]]
> Sent: Tuesday, 03 June 2003 14:24
> To: [email-masked]
> Cc: [email-masked]; [email-masked]
> Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> Deci sion
> 
> 
> Well, only a little complicated, maybe?  trademark is territorial and
> always has been.  The Spanish court
> 
> 1. might not have personal jurisdiction over a US firm marketing to US
> clients
> 
> 2. even if it did, wisely might not exercise it under forum 
> non conveniens
> 
> 3. even if exercised jurisidiction, would rule about the use 
> of the name
> *in spain*
> 
> 4. injunctive relief would risk hitting the first amendment (cf. Yahoo
> case....); damages would fall under well established principles of
> enforcement.
> 
> 5.  Note, however, that any claim in Spain would be a traditional
> infringement claim -- NOT a claim for ownership of the domain 
> name.  And
> that's exactly as it should be.
> 
> On Tue, 3 Jun 2003 [email-masked] wrote:
> 
> > 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:[email-masked]]
> > > 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/
> > > 
> > > 
> > > 
> > > 
> > > 
> > > 
> > > --
> > > This message was passed to you via the [email-masked] list.
> > > Send mail to [email-masked] to unsubscribe
> > > ("unsubscribe ga" in the body of the message).
> > > Archives at http://www.dnso.org/archives.html
> > > 
> > --
> > This message was passed to you via the [email-masked] list.
> > Send mail to [email-masked] to unsubscribe
> > ("unsubscribe ga" in the body of the message).
> > Archives at http://www.dnso.org/archives.html
> > 
> > 
> 
> -- 
> 		Please visit http://www.icannwatch.org
> A. Michael Froomkin   |    Professor of Law    |   [email-masked]
> U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
> +1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
>                         -->It's hot here.<--
> 
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------------------------------

Date: Tue, 3 Jun 2003 08:47:10 -0400
From: "Michael D. Palage" <[email-masked]>
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Decision

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: [email-masked] [mailto:[email-masked]]On Behalf Of
> [email-masked]
> Sent: Tuesday, June 03, 2003 6:03 AM
> To: [email-masked]; [email-masked]
> 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:[email-masked]]
> > 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/
> >
> >
> >
> >
> >
> >
> > --
> > This message was passed to you via the [email-masked] list.
> > Send mail to [email-masked] to unsubscribe
> > ("unsubscribe ga" in the body of the message).
> > Archives at http://www.dnso.org/archives.html
> >
> --
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>

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------------------------------

Date: Tue, 3 Jun 2003 09:20:32 -0400 (EDT)
From: "Michael Froomkin - U.Miami School of Law" <[email-masked]>
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci  sion

In the US, at least, we're approaching this question pretty much the way
we do a standard jurisdictional analysis: as we move away from the
superficial active/passive distinction and go to a fuller, more
traditional, apporach, we try to figure out the intent of the party from
the circumstantial evidence (are they seeking to 'avail themselves' of the
target jurisdiction market or laws). In most cases it's not hard; in
marginal cases it is very hard, but nothing's perfect.

If there is local presence, it's very easy.

If they are sending goods or services into the jurisdiction for
compensation knowingly, it's easy.

If they are targeting ads to the jurisdiction, it's pretty easy.

If they are selling intangibles (e.g. downloaded software) without worrying
about where it's going, and substantial quantities of it are going into
the jurisdiction, we say it's easy on the 'really should have known'
theory if nothing else.

If the sales are negligible it might be hard, but it's clear from
non-Internet cases that a very small number of sales won't create general
jurisdiction.

If there are no sales, just exchanges of information, there probably isn't
jurisdiction other than for libel.  The issue of trademark doesn't arise
here since it's rare to have "in commerce" activities without sales,
though it might be logically possible.  (I say this with less confidence
than all the above, as I've not looked recently at the case law, and some
of the cases I know of are confused on this issue.)

I'm sure Michael Geist could explain it better.

On Tue, 3 Jun 2003 [email-masked] wrote:

> Michael,
> 
> Your comments make sense to me.
> 
> Re 1, I presume that the Spanish court would have jurisdiction over a US
> firm if the US firm markets in Spain to residents of Spain?  Which then
> raises another complicated question: "When can it be deemed that an Internet
> site is marketing to the citizens of country X?"  That is, what sorts (if
> any) of country-specific actions are required?
> 
> Best,
> Richard
> 
> 
> > -----Original Message-----
> > From: Michael Froomkin - U.Miami School of Law
> > [mailto:[email-masked]]
> > Sent: Tuesday, 03 June 2003 14:24
> > To: [email-masked]
> > Cc: [email-masked]; [email-masked]
> > Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> > Deci sion
> > 
> > 
> > Well, only a little complicated, maybe?  trademark is territorial and
> > always has been.  The Spanish court
> > 
> > 1. might not have personal jurisdiction over a US firm marketing to US
> > clients
> > 
> > 2. even if it did, wisely might not exercise it under forum 
> > non conveniens
> > 
> > 3. even if exercised jurisidiction, would rule about the use 
> > of the name
> > *in spain*
> > 
> > 4. injunctive relief would risk hitting the first amendment (cf. Yahoo
> > case....); damages would fall under well established principles of
> > enforcement.
> > 
> > 5.  Note, however, that any claim in Spain would be a traditional
> > infringement claim -- NOT a claim for ownership of the domain 
> > name.  And
> > that's exactly as it should be.
> > 
> > On Tue, 3 Jun 2003 [email-masked] wrote:
> > 
> > > 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:[email-masked]]
> > > > 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/
> > > > 
> > > > 
> > > > 
> > > > 
> > > > 
> > > > 
> > > > --
> > > > This message was passed to you via the [email-masked] list.
> > > > Send mail to [email-masked] to unsubscribe
> > > > ("unsubscribe ga" in the body of the message).
> > > > Archives at http://www.dnso.org/archives.html
> > > > 
> > > --
> > > This message was passed to you via the [email-masked] list.
> > > Send mail to [email-masked] to unsubscribe
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> > > 
> > > 
> > 
> > -- 
> > 		Please visit http://www.icannwatch.org
> > A. Michael Froomkin   |    Professor of Law    |   [email-masked]
> > U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
> > +1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
> >                         -->It's hot here.<--
> > 
> 

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		Please visit http://www.icannwatch.org
A. Michael Froomkin   |    Professor of Law    |   [email-masked]
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
                        -->It's hot here.<--

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------------------------------

Date: Tue, 03 Jun 2003 09:21:21 -0500
From: Erick Iriarte Ahon <[email-masked]>
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

Hi..

Como las cosas tambien pueden cambiar... el texto completo de la noticia 
referenciada (barcelona.com), asi como el texto de la resolución en:

La Noticia, publicada por Javier Maestre (Dominiuris.com): 
http://latinoamericann.derecho.org.ar/modules.php?op=modload&name=News&file=article&sid=293&mode=thread&order=1&thold=0

La sentencia dictada por la Corte de Apelación puede encontrarse en:
http://www.bufetalmeida.com/barcelonacom.pdf

Saludos

Erick Iriarte Ahon
LatinoamerICANN (Un Proyecto Alfa-Redi)
http://www.alfa-redi.org

At 08:23 a.m. 03/06/2003 -0400, Michael Froomkin - U.Miami School of Law wrote:
>Well, only a little complicated, maybe?  trademark is territorial and
>always has been.  The Spanish court
>
>1. might not have personal jurisdiction over a US firm marketing to US
>clients
>
>2. even if it did, wisely might not exercise it under forum non conveniens
>
>3. even if exercised jurisidiction, would rule about the use of the name
>*in spain*
>
>4. injunctive relief would risk hitting the first amendment (cf. Yahoo
>case....); damages would fall under well established principles of
>enforcement.
>
>5.  Note, however, that any claim in Spain would be a traditional
>infringement claim -- NOT a claim for ownership of the domain name.  And
>that's exactly as it should be.
>
>On Tue, 3 Jun 2003 [email-masked] wrote:
>
> > 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:[email-masked]]
> > > 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/
> > >
> > >
> > >
> > >
> > >
> > >
> > > --
> > > This message was passed to you via the [email-masked] list.
> > > Send mail to [email-masked] to unsubscribe
> > > ("unsubscribe ga" in the body of the message).
> > > Archives at http://www.dnso.org/archives.html
> > >
> > --
> > This message was passed to you via the [email-masked] list.
> > Send mail to [email-masked] to unsubscribe
> > ("unsubscribe ga" in the body of the message).
> > Archives at http://www.dnso.org/archives.html
> >
> >
>
>--
>                 Please visit http://www.icannwatch.org
>A. Michael Froomkin   |    Professor of Law    |   [email-masked]
>U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
>+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
>                         -->It's hot here.<--
>
>--
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------------------------------

Date: Tue, 3 Jun 2003 10:13:24 -0400
From: "John Berryhill Ph.D. J.D." <[email-masked]>
Subject: Re: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Decision

>  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.

Bingo.

At one point, Mr. Weinstein, arguing on behalf of the city, raised the
prospect of the US becoming a haven for cybersquatters if the court failed to
apply Spanish law.  Judge Motz was intrigued by this and asked "Hasn't it
always been true" that a party in the US could appropriate a foreign mark for
use here, if there were no rights pertaining to the mark.  Mr. Weinstein
waffled a bit, and Judge Motz said, "There are tons of cases on that."

Mr. Weinstein argued that because the internet is a global computer network,
that it deserves some sort of special treatment.  Judge Wilkinson then made a
very sharp comment to the effect of "Simply because you have a global
computer network does not change US law."

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------------------------------

Date: Tue, 3 Jun 2003 09:52:52 -0500
From: "Rodrigo Orenday Serrato" <[email-masked]>
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

"When can it be deemed that an Internet site is marketing to the
citizens of country X?"  That is, what sorts (if any) of
country-specific actions are required?"

To the best of my knowledge, practice shows that an Internet site may be
deemed to market to the citizens of a given country if (i) the
corresponding website may be accessed from said country, (ii) if goods
or services may be delivered or purveyed to residents in said country,
and (iii) if the website has a version in the official language of said
country.

Atentos Saludos, Best Regards,
RODRIGO ORENDAY SERRATOS

- -----Mensaje original-----
De: [email-masked] [mailto:[email-masked]] En nombre de
[email-masked]
Enviado el: Martes, 03 de Junio de 2003 07:29 AM
Para: [email-masked]
CC: [email-masked]; [email-masked]
Asunto: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
Deci sion

Michael,

Your comments make sense to me.

Re 1, I presume that the Spanish court would have jurisdiction over a US
firm if the US firm markets in Spain to residents of Spain?  Which then
raises another complicated question: "When can it be deemed that an
Internet site is marketing to the citizens of country X?"  That is, what
sorts (if
any) of country-specific actions are required?

Best,
Richard

> -----Original Message-----
> From: Michael Froomkin - U.Miami School of Law 
> [mailto:[email-masked]]
> Sent: Tuesday, 03 June 2003 14:24
> To: [email-masked]
> Cc: [email-masked]; [email-masked]
> Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com 
> Deci sion
> 
> 
> Well, only a little complicated, maybe?  trademark is territorial and 
> always has been.  The Spanish court
> 
> 1. might not have personal jurisdiction over a US firm marketing to US

> clients
> 
> 2. even if it did, wisely might not exercise it under forum
> non conveniens
> 
> 3. even if exercised jurisidiction, would rule about the use
> of the name
> *in spain*
> 
> 4. injunctive relief would risk hitting the first amendment (cf. Yahoo

> case....); damages would fall under well established principles of 
> enforcement.
> 
> 5.  Note, however, that any claim in Spain would be a traditional 
> infringement claim -- NOT a claim for ownership of the domain name.  
> And that's exactly as it should be.
> 
> On Tue, 3 Jun 2003 [email-masked] wrote:
> 
> > 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:[email-masked]]
> > > 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/
> > > 
> > > 
> > > 
> > > 
> > > 
> > > 
> > > --
> > > This message was passed to you via the [email-masked] list. Send mail

> > > to [email-masked] to unsubscribe ("unsubscribe ga" in the body

> > > of the message). Archives at http://www.dnso.org/archives.html
> > > 
> > --
> > This message was passed to you via the [email-masked] list. Send mail 
> > to [email-masked] to unsubscribe ("unsubscribe ga" in the body 
> > of the message). Archives at http://www.dnso.org/archives.html
> > 
> > 
> 
> -- 
> 		Please visit http://www.icannwatch.org
> A. Michael Froomkin   |    Professor of Law    |   [email-masked]
> U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
> +1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
>                         -->It's hot here.<--
> 
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------------------------------

Date: Tue, 3 Jun 2003 10:01:49 -0500
From: "Rodrigo Orenday Serrato" <[email-masked]>
Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Decision

"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."

Michael, I agree with you to some extent on the foregoing. In its 1998
report on the Net, the Conciel d'Etat Fancise stated that the Net is an
environment wherein all laws may apply, even in its present state. 

However, I have my doubts as to whether the solutions to which we may
arrive by applying such laws, unamended in order to meet with the
requirements of ITC are the proper solutions; that is to say, whether or
not they are just and fair, considering that they may not always contain
sufficient elements to comprise all interests at stake in a given case,
as the underlying policy quite probably did not address them at the time
such provisions were drafted.

Atentos Saludos, Best Regards,
RODRIGO ORENDAY SERRATOS

- -----Mensaje original-----
De: [email-masked] [mailto:[email-masked]] En nombre de Michael D.
Palage
Enviado el: Martes, 03 de Junio de 2003 07:47 AM
Para: [email-masked]; [email-masked]; [email-masked]
Asunto: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
Decision

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: [email-masked] [mailto:[email-masked]]On Behalf Of 
> [email-masked]
> Sent: Tuesday, June 03, 2003 6:03 AM
> To: [email-masked]; [email-masked]
> 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:[email-masked]]
> > 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/
> >
> >
> >
> >
> >
> >
> > --
> > This message was passed to you via the [email-masked] list. Send mail 
> > to [email-masked] to unsubscribe ("unsubscribe ga" in the body 
> > of the message). Archives at http://www.dnso.org/archives.html
> >
> --
> This message was passed to you via the [email-masked] list.
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------------------------------

End of GA-DIGEST V1 #1714
*************************