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.