The recent ruling on the domain name “mezquitadecordoba.org” confirms a key idea for any business: a domain name – no matter how old – does not prevail over a registered trademark. The decision highlights the importance of having a solid strategy in place for protecting digital assets at a time when the online world carries increasing weight.
In an economic climate in which a company’s digital presence can have a major impact on its business, domain names have evolved far beyond their typical function as mere technical addresses. They have now become identifiers – the gateway to the online market and often the very first touchpoint between a business and its customers.
However, this competitive edge inevitably comes into conflict with trademark rights, since a domain name leads to a web space where the business showcases its commercial offering – a function that, at its core, belongs to trademarks.
In this context, the recent Supreme Court judgment 1341/2025, of September 30, 2025, resolves a dispute that, while technically framed as an industrial property conflict, raises questions that go beyond the specific case, such as the hierarchy between different distinctive signs online, or how “prior rights” should be defined when assessing the limits of a trademark owner’s exclusive rights.
The claimant in the lawsuit was Alhambra Valparaíso Ocio y Cultura S.L., owner, since 2007, of the domain name “mezquitadecordoba.org”, used for marketing guided tours for tourists. The respondent was the Cathedral Chapter of Córdoba, which had registered the word marks “Mezquita de Córdoba” in 2012. The striking aspect of this case was precisely the reverse chronology: the domain name predated the registered trademark by five years. This circumstance, which appeared to be favorable to the claimant, turned out to be legally irrelevant, which underscores the different nature and legal scope of both assets and highlights the importance of having a coherent registered protection strategy in place.
Background of the case
Before turning to the Spanish courts, the Chapter had relied on ICANN’s (Internet Corporation for Assigned Names and Numbers) “administrative proceeding for the resolution of disputes” and the World Intellectual Property Organization (WIPO) was in charge of managing the proceeding as an accredited service provider.
This mechanism has been conceived as a quick and specialized way of solving disputes between trademark owners and registered domain name holders. It involves evidencing (i) that the domain name is identical or confusingly similar to the trademark, (ii) that the domain name holder has no rights or legitimate interests in respect of the domain name and (iii) that it was registered and used in bad faith. In this case, the WIPO panel upheld the Chapter’s claim and ordered the transfer of the domain name “mezquitadecordoba.org”.
However, this system does not freeze out the ordinary jurisdiction: the domain name holder may turn to the courts before going ahead with the transfer if it considers that the decision does not comply with the law.
Both Madrid Commercial Court no. 11 and the Madrid Provincial Appellate Court (section twenty-eight), at first and second instance, dismissed Alhambra Valparaíso’s claims on the grounds that the domain name in question did infringe the respondent’s trademarks.
Dissatisfied with both decisions, Alhambra Valparaíso lodged a cassation appeal and a procedural‑infringement claim at the Supreme Court. It based its challenge on two main arguments: first, the loss of ius prohibendi due to acquiescence in accordance with Article 52.2 of the Trademarks Law, and second, that the prior registration of the domain name should take precedence over the Chapter’s later‑registered trademarks.
Loss of rights through acquiescence: can the passage of time consolidate a domain name over a trademark?
The claimant held that since it had registered the domain name in 2007 and the Chapter had remained inactive for years after registering its trademarks in 2012, article 52.2 of the Trademarks Law was applicable. This article prevents the holder of a “prior right” that has acquiesced to the use of a subsequent mark for five consecutive years, from requesting the invalidity of or objecting to such subsequent mark. However, the Supreme Court rejected this argument.
According to the Court, this provision refers to “prior rights” in the strict sense of the term, that is, the rights that form the basis of the relative grounds for refusal set out in Articles 6 to 9 of the Trademark Law: earlier trademarks and trade names, company names, personal names, signs used in commercial activity with more than merely local reach, and copyright or industrial‑property rights. Domain names do not appear on that list.
Accordingly, the Court rules out the possibility of treating a domain name as a right that can be consolidated through acquiescence. Instead, it holds that the passage of time, however extensive, does not alter the legal nature of a domain name, nor does it elevate it to the status of a ‘prior right’ for the purposes of Article 52.2.
As a result, the holder of a prior domain name cannot neutralize the exercise of ius prohibendi by the owner of a subsequent trademark, on the grounds of loss of rights through acquiescence.
The conflict between time and ownership
Perhaps the most relevant aspect of the judgment is its analysis of the possibility of a domain name infringing a trademark, even if the domain name has been registered earlier.
The court did not accept the claimant’s argument in this respect either. The ruling specified that article 37 of the Trademarks Law, which regulates the limitations on exclusive rights, does not establish any exception that requires the trademark owner to acquiesce to domain names that are likely to cause confusion, even if they have been registered earlier.
In this case, the court considered that the likelihood of confusion did exist, because the domain name was practically identical to the Chapter’s trademarks and the services offered on the website – guided tours – were closely related to those provided by the respondent – ticket sales. Consequently, the public might believe that there was a relationship between the domain name and the trademark.
The claimant’s efforts to argue that there were differences between the signs, such as the use of the domain “.org” and the inclusion on its website of a notice that it was not the official website of the Mosque-Cathedral of Córdoba, were also unsuccessful. The court held that these assertions, far from refuting the existence of a risk of confusion, actually supported it.
Finally, the high court underscored that the appropriate channel for the domain name holder to have been able to undermine the exercise of ius prohibendi, would have been to bring a claim or invalidity action against the trademark, essentially due to the registration of the mark in bad faith. However, since it has not done so, the trademark owner continues to hold its exclusive right against the domain name.
Conclusion
The judgment underscores the structural imbalance in our legal system between domain names and trademark rights. Whereas a trademark registration confers exclusive rights that can be used against third parties’ distinctive signs, the registration of a domain name does not generate a comparable right.
This different treatment reflects the distinct functions historically attributed to each asset: the trademark, conceived as an industrial property right, and the domain name, understood as a technical identifier on the Internet. Yet the question remains whether this imbalance is justified in a context such as today’s, in which domain names are acquiring an increasingly significant commercial role.
The Mezquita de Córdoba case teaches us that being the first to register a domain name neither guarantees the ability to retain it, nor allows the holder to invoke the passage of time or acquiescence to neutralize ius prohibendi by a trademark owner. Ultimately, a domain name cannot be regarded as a ‘prior right’, as that concept is understood in law.
Irene Gómez
