On a recently published decision (Cassational appeal no. 1561/2003), the Spanish Supreme Court has declared that the registration of a national (Spanish) domain name (.es) that imitates a registered trade mark cannot be cancelled on the grounds of the Unfair Competition Law, but can only be cancelled and removed from registry if the Court case is construed as a trade mark infringement.

Following the general principle of Civil Law “Lex specialis derogat legi generali”, the Court considered that in cases in which claimant owns registered trade marks that are identical/similar to the domain name registered by respondent, the respondent’s behaviour of registering a identical/similar national (.es) domain name is not punishable under the Spanish Unfair Competition Act, that in section 5 forbids conducts qualifying as “acts of bad faith in trade”.

According to section 34.3.3 of the Spanish Trade Mark Act, the registration of a trade mark shall confer on its owner the exclusive right to use it in economic transactions, in particular, “using the sign on telematic communication networks and as a domain name”.

The registration and use as a domain name in Spain of a sign belonging to a third party will only be punishable under the Spanish Unfair Competition Act in those cases in which claimant does not have a specific trade mark coverage.