TRAFFIC WEB HOLDING BV (”Traffic”) registered the domain barcelona.eu. Ajuntament de Barcelona (Barcelona City Council) appealed against the EURID registration.
THe registration was made prior to sunrise, and the registrant relied on their Benelux trademark, the form of the trade mark comprises the words “BARC & ELONA“, in blue and in a stylised upper case, the words being placed in between two parallel horizontal lines, each line being comprised of small red squares.
The spaces between the words can be removed, but what about the symbol “&†(the ampersand)? It could be read as BARCELONA, but it could also be read as BARCANDELONA.
Other Benelux marks for other European cities were lodged in a similar form by Traffic for many other European cities anc countries, such as AMST & ERDAM, ATH & ENS, BIRM & INGHAM etc and BEL & ARUS, BO & OSNIA etc.
Article 11 of Commission Regulation (EC) No 874/2004 says
…
Where the name for which prior rights are claimed contains special characters, spaces, or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hypens, or, if possible rewritten… Special character and punctuations as referred to… include the following:…&…
So Traffic is cartainly entitled to register BARC-ELONA.EU, but what about BARCELONA.EU? Lets look again at Article 11, it says “…replaced with hypens, or, if possible rewritten” (my emphasis). So it seems that the latter is acceptable, the provision is ambiguous.
If the Article were construed to give an applicant an unfettered choice, it could lead to some surprising results. For example, the owner of a trademark for B&A&R&C&E&L&O&N&A could have chosen to use it as the basis of a sunrise application for BARCELONA.eu. The ARD though considers Prior Rights and concludes that Traffic should have rewritten their application as BARCANDELONA.
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