First famous names domain name dispute considered
 Background disputes appealed to court individual names
 Jos茅 Carlos Erdozain
 Conflicts between domain names and trademarks are common in our days. This
 sort of disputes found a procedure of solution by means of the UDRP, which has
 become the shortest and cheapest way to resolve them. However, the UDRP's
 purpose was an approach to the conflicts where trademarks and domain names
 were involved. What if the conflict arises between a domain name and the Christian
 name of a person? Would it be also applicable?
 The answer in the scope of the UDRP has been affirmative so far, provided that the
 name at issue is proved to have become a common law trademark or to be
 protected under a so called "well-known" character which assimilates it to a
 trademark in its effects. Cases of Julia Roberts, Lorenzo Silva, Rosa Montero inter
 alia are commonly examples of this.
 In my jurisdiction, and I suppose this must be a fact also in others, cybersquatters
 are tending to initiate legal proceedings under Section 4 of the Policy, by virtue of
 which the defendant in a UDRP proceeding may dispute the result of the Panel
 before courts within 10 days after being in receipt of the decision of the Panel. The
 purpose is quite obvious - to stop or to delay the execution of the Panel decision by
 means of leaving the result of the proceedings in hands of courts which
 unfortunately are likely to resolve not until a long period of time has elapsed. In the
 meantime, perhaps the owner of the trademark or name may be in disposition of
 negotiating and pay economic compensation to the cybersquatter by anticipating
 the transfer of the disputed domain name.
 As far as I am concerned, not one of the Spanish courts have issued in favour of
 the cybersquatters (complainants before courts, defendant in the scope of the
 UDRP) , having been several cases decided so far. In general, Spanish courts (and
 appeal decisions have been issued to this respect, so it can be said that our
 experience is quite good) have established that registering a domain name which is
 similar or identical to a well-known trademark cannot be protected as legitimate
 property of the registrant, nor he cannot be considered as prior tempore, potior
 iure right holder. On the contrary, the registrant can only be deemed as having
 acted in bad faith and with abuse of right (i. e. unfair exercise of rights) . Now, after
 the new Trademark Law has been approved and entered into force (as of 12
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 October 2002) , the registration of a domain name which is identical or similar to a
 trademark is liable to be trademark infringement also.
 But Spanish courts have not had the chance to decide about the use and
 registration of domain names which are similar to the names of individuals -
 neither companies, nor well-known trademarks.
 Two recent decisions of First Instance Courts have settled a new doctrine about this
 and clarified whether the solution sought by the UDRP can also be applicable
 mutatis mutandi to the conflicts to which we are now referring.
 I would like to produce some comments in relation with the decision dated 25
 October 2002 (regarding <lorenzosilva. com>) and 7 January 2003 (<regarding
 rosa montero. com>) . The facts are as we have described. Disputes regarding those
 domain names were decided by a WIPO panel, in its moment, in favour of the
 respective complainants, being both of them well-known writers in the Spanish
 language world. Registrant was the same in both cases (as a matter of fact, the
 registrant had already registered domain names with well-known names of musical
 artists and writers) .
 In summary, the decisions in question set forth the following. Firstly, the use of an
 individual name as domain name is an infringement of intimacy of the person
 according to Spanish Act 1/1982 for the Protection of personal and family Privacy,
 whereby the concept of privacy also expressly includes the person's name. So,
 although the names were not protected under Trademark Law, Act 1/1982 would
 protect them from the legal point of view.
 In addition, the courts continue to say, although the names at issue are not
 trademarks per se, the fact that the plaintiff has registered various domain names,
 which all of them consist of artists' or pop music band's music, makes undoubted
 that the purpose of the registrant was not to build up a portal dedicated to famous
 persons or authors (as he contended) , but to prevent those famous persons from
 registering themselves a domain name and seek for an indemnification.
 The Judges refer also to the legal value of the UDRP proceedings under national
 law, and although the Policy is not considered as binding internal law, the judges
 mention it as an example to follow in order to know the sort of behaviours and acts
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 forbidden or subject to liability in the field of conflicts between domain names and
 trademarks or famous individual names. Therefore, the UDRP is adopted as
 recognized, important interpretation criteria.
 After all this, the judges, I would say quite obviously, decide the compulsory
 transfer of the disputed domain names to the plaintiffs as well as the payment by
 the registrant of around 15,000 euros as indemnification (moral damages for use of
 the name) .
 I can report that these decisions have been appealed before the Audiencia
 Provincial of Madrid, which will have to render a decision in about 10 or 15 months.
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