Alhambra Valparaíso Ocio y Cultura S. L. was the owner of the domain name “mezquitadecordoba.org”, which it registered in 2007. This domain corresponded to a website on which the company advertised guided tours of the Mosque of Córdoba, among other tourist activities. Subsequently, The Cathedral Chapter of Córdoba obtained the concession for the word marks ‘Mezquita de Córdoba’ (Mosque of Córdoba). The Chapter also brought arbitration proceedings before the WIPO, which ordered the transfer of the disputed domain name to the Chapter, on the grounds that this domain name infringed the rights of the trademark owner and constituted a use in bad faith by Alhambra Valparaíso.

In response to WIPO’s decision, Alhambra Valparaíso filed a complaint contesting said decision, in order to obtain a declaration stating that the use of the disputed domain name did not constitute an infringement of the defendant’s trademark rights or a bad faith use for commercial purposes, since the domain name had been registered prior to the registration of the trademark. However, the complaint was dismissed at first instance because the trademarks in question were found to be well-known and the registration of the plaintiff’s domain name was deemed to be an unfair exploitation of the reputation obtained by the well-known trademarks ‘Mezquita de Córdoba’, creating a false impression in the mind of the users suggesting  that the services offered on the website were linked to the Chapter. On appeal, it was held that the defendant’s trademarks were not well-known, but rather that it was the Mezquita de Córdoba itself that was well-known. Moreover it was concluded that the protection conferred on trademark registrations extends to domains obtained prior to the concession of the trademark. The disputed domain name  was found to be identical to the name of the monument without including any clarification indicating the activity of the website owner, therefore, there is an intention to attract the attention of consumers through the use of that name. Furthermore, the website not only offers and advertises guided tours of that monument, but also of other places.

Alhambra Valparaíso decided to appeal the Provincial Court’s judgment, on the grounds that the domain had been registered prior to the registration of the trademark, that the actions for tolerance had prescribed, and that there was no risk of confusion between the disputed domain and the Chapter’s trademark, because website of the disputed domain did not sell tickets for the Mosque-Cathedral of Córdoba, which was the only service provided by the trademark owner.

Finally, the Spanish Supreme Court resolved that there was no limitation requiring the trademark owner to tolerate the existence of confusing domain names that had been registered previously. In this regard, the European directive establishes that the right conferred by the trademark cannot allow its owner to prohibit third parties from using, in the course of trade, a prior right at a local level. In Spain, this directive was only transposed with regard to trade names but not for website domains. Therefore, the requirement of tolerance does not apply, as it is not contemplated for domain names. Likewise, given the identity of the domain name with the defendant’s trademarks and the similarity of the services provided, the risk of confusion and association between the two is assessed. The use of the domain “.org” and the font size of the warning on the claimant’s website (indicating that it is not the official website of the Mosque-Cathedral of Córdoba) demonstrate, even more clearly, the risk of confusion.

 

Spanish Supreme Court Judgement 4206/2025 of 30 September 2025