WIPO D2000-0505 · decided 4 August 2000
Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc.
What happened afterwards
The transfer was later reversed by the United States Court of Appeals for the Fourth Circuit. A useful reminder that a UDRP decision is not final and can be displaced by a court.
The parties
- Complainant
- Excelentisimo Ayuntamiento de Barcelona
- Respondent
- Barcelona.com Inc.
What did the panel find on each element?
| Policy paragraph | Finding |
|---|---|
| 4(a)(i) Identical or confusingly similar | The panel found barcelona.com confusingly similar to the Spanish trademarks of the Barcelona city council, because the word BARCELONA is the distinctive element of those registered trademarks. |
| 4(a)(ii) No rights or legitimate interests | The panel found Barcelona.com Inc. had no rights or legitimate interests. It held that registering the name first gives way to parties with better rights, such as the city council. |
| 4(a)(iii) Registered and used in bad faith | The panel found bad faith mainly under paragraph 4(b)(iv) because Barcelona.com Inc. traded on public confusion with the city, and also relied on paragraphs 4(b)(ii) and, partly, 4(b)(i). |
Why does Barcelona.com matter for a complaint today?
In Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., D2000-0505, a sole panelist ordered barcelona.com transferred to the Barcelona city council. The council did not win because it governs a city called Barcelona. It won because it owned Spanish trademark registrations in which the word BARCELONA was the distinctive element. The WIPO Overview 3.1, section 1.6, draws the same line today: a place name used only in its geographical sense gives no standing unless it is registered as a trademark. So a public body that wants to use the UDRP over a place name needs a registered trademark first. The decision has limits worth knowing before you cite it. The panel's discussion of the second element mostly described the council's own interest in the name, and said little about whether Barcelona.com Inc. had one. The panel also applied paragraph 4(b)(ii) without identifying any other abusive registrations, although that paragraph requires "a pattern of such conduct". Section 3.1.2 of the Overview says a pattern needs at least two instances. Treat this decision as authority on standing for a registered place name, and be careful relying on its bad faith reasoning.
What does the WIPO Overview 3.1 say?
The WIPO Overview 3.1 summarises how WIPO panels decide each issue. These sections cover the same point of law.
- Section 1.6: Can a complainant's rights in a geographical term provide standing to file a UDRP complaint? The Overview cites this decision here.
- Section 3.1.2: What constitutes a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name? The Overview cites this decision here.
Who decided the case?
A single panelist, Marino Porzio, decided the case on 4 August 2000.
Read the decision
The full text is published by the WIPO Arbitration and Mediation Center. We summarise it here; the decision itself is the authority.
Summarised by Gergana Dimitrova, who worked at the WIPO Arbitration and Mediation Center from 2018 to 2021 and sits as a domain name panelist at the Czech Arbitration Court. Checked against the published decision on 23 October 2026. Full background.
Someone has taken a domain that uses your brand?
The first assessment is free and comes back within 24 hours. If the case is weak we say so rather than take the fee.