Black v. Molson Canada
Douglas Black, applicant, and
Molson Canada, respondent
 O.J. No. 2820
Court File No. 02-CV-231-828CM3
Ontario Superior Court of Justice
B. Wright J.
Heard: July 9, 2002.
Judgment: July 18, 2002.
Zak Muscovitch, for the applicant.
Barry Hutsel and Elizabeth Elliott, for the respondent.
B. WRIGHT J.: This application is the result of
a domain name dispute between the applicant and the
respondent, in respect of the domain name, canadian.biz.
The applicant seeks a declaration that he is the
rightful registrant of the domain name and that the respondent
has no rights to the domain name as against the applicant.
The applicant, a Canadian citizen, is a graduate
of the University of Toronto (1999), where he completed a
doctorate in Critical Global and Community Issues. He is
currently self-employed as a research consultant and web site
developer in education, transportation, and driver safety.
The applicant registered the domain name,
canadian.biz on or about March 27, 2002. The applicant
registered the domain name through an online auction. The
auction process was open to the general public.
The applicant complied with the only restrictions
on registering ".biz" domain names, which are as follows:
Registrations in the .BIZ TLD must be used or
intended to be used primarily for bona fide business
or commercial purposes;
Registrations in the .BIZ TLD must comply with the
Uniform Dispute Resolution Policy ("UDRP"), as
adopted and as may be amended by the Internet
Corporation of Assigned Names and Numbers. For
proceedings initiated before the Commencement-of
-Service Date, a modified version of the UDRP, known
as the Start-Up Trademark Opposition Policy ("STOP")
Various companies are accredited by the Internet
Corporation for Assigned Names and Numbers ("ICANN") to sell
or re-sell domain names to the public. These companies are
called domain name "registrars". 4Domains, Inc., doing
business as Blueberry Hill Communications Inc. (the
"registrar") is such a domain name registrar and was the one
that the applicant used to register canadian.biz. The
registrar, 4Domains, Inc., is more precisely described as
domain name re-seller that registers domain names on behalf of
Neulevel Inc., which is the exclusive operator of the .biz
domain name registry.
Since the domain name was not available through
4Domains, Inc. on a first come first served basis, but was the
subject of competing bids for registration, the applicant
could not count on being the successful bidder and subsequent
registrant. Accordingly, the applicant did not undertake any
preparations to develop and use the domain name, canadian.biz,
except for conceiving of a web portal site and meeting place
for Canadian businesses and entrepreneurs to meet, interact,
and conduct business together.
The registration of this domain name was part of a
complicated round-robin process initiated by Neulevel Inc.,
which involved opening up registration attempts to the 70 or
more domain name registrars or resellers world wide. Each
reseller was allowed to submit just one person's name, which
was put into the round-robin process.
4Domains, Inc. was one of the few resellers that
chose to have an open, public auction for the names, with
competing bids potentially pushing the price of popular domain
names higher. At the end of the auction process, 4Domains,
Inc. submitted just the one winning bid to Neulevel Inc. to
enter the round-robin process, which was a draw from among all
of the names submitted for that same domain from all the
After first winning the 4Domains, Inc. auction
process, the applicant was fortunate to also win the
round-robin drawing and gain ownership of the domain name,
which was registered at a cost of US $49.
On or about April 10, 2002, the applicant was
contacted by Lori A. Ball, who identified herself as "Manager,
Legal Administration, and Secretary" for Molson Canada.
Ms. Ball advised that her company sold "a well known brand of
beer called, `CANADIAN', that was the subject of a Canadian
trade-mark registration". Ms. Ball further demanded that as a
result, the applicant must transfer the domain name to Molson
Canada or she would initiate a complaint with ICANN over the
applicant's registration of the domain name.
On April 30, 2002, the applicant replied to
Ms. Ball via email, and advised her that he had no intention
of using the domain name in connection with beer or their
product or to otherwise confuse the public. The applicant
also advised Ms. Ball that the word, "Canadian", is an
"incredibly generic" term and that he believed that his
registration of canadian.biz was perfectly valid.
In an email to the applicant dated April 24,
2002, Ms. Ball admitted to the applicant, that the sole basis
and reason for Molson Canada's claim to the applicant's domain
name, was their concern that it may be inappropriately used by
someone in the future.
¶ 14 Ms. Ball's email states:
However, because it is such a very important trade-mark
for our company, we feel it is necessary to pursue this
IP claim in connection with the domain name canadian.biz.
While we appreciate that it may not be your present
intention to use this domain name to create negative
publicity or confusion in the public's mind about our
product or our company, we cannot be certain that your
plans will not change or that some possible future owner
of the domain name will have the same honourable
Moreover, regardless of your intentions, the fact remains
that by registering the domain name CANADIAN.biz, you are
preventing Molson from reflecting its trade-mark in a
corresponding domain name. In order to protect our brand
name, we intend to proceed with the IP claim. Our offer
to accept a transfer of the name and to reimburse you for
your reasonable costs in obtaining this domain name still
Molson Canada commenced a complaint with the
National Arbitration Forum (the "NAF") against the applicant
in connection with his registration of the domain name on
April 26, 2002. The NAF is a dispute resolution provider
accredited by ICANN to provide "administrative hearings" of a
summary nature in order to resolve disputes between domain
name registrants and complainants. As a registrant of a
".biz" domain name, the applicant agreed in his Registration
Agreement to submit to such an administrative hearing, if
The NAF is mandated to employ the ICANN Start-up
Trademark Opposition Policy ("STOP"), the ICANN Uniform
Dispute Resolution Policy ("UDRP") and STOP Rules, to resolve
On May 30, 2002, the NAF appointed Robert R.
Merhige Jr. to adjudicate the dispute. In his decision dated
June 11, 2002, he directed that the registration of the domain
name Canadian.biz be forthwith transferred to Molson Canada.
Pursuant to para.4(k) of the UDRP and STOP, by
issuing the within application and delivering a copy to the
applicable registrar, the applicant has caused the transfer of
the domain name to be automatically frozen pending the
decision of the court.
The criteria used by Mr. Merhige in arriving at
his decision were:
Paragraph 4(a) of the STOP Policy requires that the
Complainant must prove each of the following three
elements to obtain an order that a domain name should be
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
the Respondent has no rights or legitimate interests
in respect of the domain name; and
the domain name has been registered or is being used
in bad faith.
I note that in order for the complainant Molson
Canada to be successful in having the domain name transferred
to it, all three elements must be proven.
Molson Canada owns the registered trademark
"CANADIAN". Mr. Merhige concluded, "It's beyond question that
the domain name in issue is identical to the mark in which
Complainant has rights".
But, is that the end of the enquiry? Does that
mean that Molson Canada should automatically have the domain
name canadian.biz transferred to it? The fundamental problem
stems from the registration of the generic name, "Canadian",
as a trademark. Until this case, I was unaware that the word
"Canadian" was a registered trademark of Molson Canada. In my
view the trademark registration should only have been allowed
as "Molson Canadian".
In the registration details for the registration
of the trademark CANADIAN there is the following disclaimer:
The Applicant disclaims the right for the purpose of this
application and the resulting registration to the
exclusive right to the use of the word CANADIAN apart
from the trade-mark in connection with all of the wares
except brewed alcoholic beverages, namely beer.
From this disclaimer I conclude that Molson
Canada intended to use the word "CANADIAN" only with respect
to beer. Therefore, since the trademark registration does not
give Molson Canada exclusive use of the word "Canadian", any
person should be able to own the domain name, "canadian.biz".
There are hundreds of Canadian businesses and
entities which use the word "Canadian" as a prefix or suffix
for identification purposes.
I venture to say that the word "Canadian"
accompanied by the suffix "biz" would not conjure up in the
minds of most Canadians as referring to Molson Canadian beer.
I also note that there are other domain names
containing the word "Canadian" which have been registered as:
canadian.ca; canadian.com; canadian.net; and canadian.org.
These domain names are owned by persons other than Molson
If canadian.biz has to be transferred to Molson
Canada because it is identical to Molson Canada's trademark
"CANADIAN", then it follows that the other above domain names
containing the word "Canadian" should also be transferred to
Molson Canada. However, although these other domain names
have been registered for some time, Molson Canada has
apparently taken no steps to challenge those registrations and
Molson Canada has apparently suffered no prejudice by their
Mr. Merhige's decision is dated June 11, 2002.
Another decision by a different panelist dealing with
"American.biz" was released June 13, 2002. (See American
Airlines Inc. v. WebWide Internet Communication GmbH, Claim
No. FA0204000112518, (Nat.Arb.Forum), June 13, 2002.) That
decision came to the opposite conclusion and refused to
transfer the domain name to the complainant.
In that case American Airlines is the owner of
registered mark "American" for goods described as "model
airplanes made of plastic, metal and wood; model airplanes
incorporating a metal coin bank". The respondent registrant
of "American.biz" is in the business for hotels, travel and
Estella S. Gold, Panelist, found, "It is
undisputed that the mark `American' is identical to the
registration of the domain name `American.biz' for this STOP
proceeding". In her reasons she states:
On the whole, courts have held that the addition or
variation of any element of AMERICAN, no matter how
slight, will remove it from the geographically
descriptive category for American-based sellers. For
example, AMERICAN GIRL shoes, ALL AMERICAN on radios,
AMERICAN PLAN CORPORATION for insurance services, and
AMERICANA for hotel services, were held arbitrary uses.
American Airlines, however, did not add additional words
or a variation of any element of `American', in its
registration of the mark at issue. The unadorned, simple
word AMERICAN as used by Complainant herein has been
repeatedly held geographically descriptive (and therefore
unprotectable) on paper cups, ceramic tiles, gasoline,
truck bodies, and automobile associations.
Simply because a domain name is identical or
similar to a trademark name should not result in the transfer
of the domain name to the trademark owner. In my view, unless
there is some evidence that the use of the domain name
infringes on the use of the trademark name, a person other
than the owner of the trademark should be able to continue to
use the domain name.
Rights or Legitimate Interests
In his response to Molson's complaint the
... I have every intention of using it, and not merely to
sell it to Molson or someone else, (although I understand
that arbiters have determined that even that is a
legitimate business effort in some circumstances). I'm
not sure how much of my plans I am required to reveal
(considering confidentiality concerns), but I can say
that I have, to name just one example, been engaging with
the Canadian E-Business Opportunities Roundtable. The
final report has finally been released, titled: `Fast
Forward 3.0: Maintaining the Momentum.' ... The report
indicates that more and more Canadian businesses are
going online, and Canadian e-commerce last year netted US
$26 billion. Canada is now number 3 in the world in
terms of e-readiness, and Canadians access the Internet
more per capita than any other G8 nation. Finally, 63
percent of Canadian businesses were online as of 2000, a
number that is growing daily. It is the growth and
success of Canadian businesses that use the Internet that
I plan to utilize for my own profit-seeking venture by
using the canadian.biz domain. I was working toward this
goal far in advance of my successful registration of the
domain name. That is why I registered it.
Mr. Merhige, in his decision, states that the
applicant's above response statement, "... can be
characterized only as an unsupported self-serving allegation
which is insufficient to establish any rights or legitimate
interests in respect to the domain name in issue."
Mr. Merhige also states, "... there is nothing in
the record of any demonstrable preparations to use the domain
name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services."
But, the restriction on registering "biz" domain
names states, "... must be used or intended to be used
(emphasis added) primarily for bona fide business or
commercial purposes." The applicant was not required to put
forward a complete business plan as to his proposed use of the
domain name "canadian.biz". Because of the manner in which
this domain name was "auctioned off" I suspect that very few
hopeful registrants spent a lot of time developing specifics
on how they would use the domain name if they were the lucky
winners of the right to register the domain name
It seems to me that there is sufficient evidence
that the applicant intended to use "canadian.biz" for a bona
fide business or commercial purpose.
I note that Molson Canada's complaint does not
outline how it intended to use "canadian.biz".
The following are some of the domain names owned
by Molson Canada:
¶ 40 I doubt that the public would confuse
"canadian.biz" with either "molsoncanadian.biz" or
"molson.biz". I find it difficult to understand why it is
necessary that Molson Canada also own "canadian.biz" except to
prohibit anyone else from owning it.
Mr. Merhige's decision on the bad faith element
I find that the registration by the Respondent of record,
whether it be as it would appear from the official record
of Blueberry Hill Communications, Inc., or Douglas Black
four years subsequent to Complainant's registration of
its Canadian trademark, and almost 50 years subsequent to
the Complainant's first use of the mark constitutes bad
I interpret that statement to mean that because
Molson Canada owns the trademark "CANADIAN", and everyone is
presumed to know about the "CANADIAN" trademark, anyone who
registers "canadian.biz" does so in bad faith. I do not agree
with the finding of bad faith. If Mr. Merhige is correct, the
only person who could register "canadian.biz" without bad
faith is Molson Canada.
In my view Molson Canada failed to prove all
three elements required for its complaint to be allowed.
There is no reason why the applicant should not
be the owner of the domain name "canadian.biz". There is no
compelling reason to transfer the domain name "canadian.biz"
to Molson Canada.
Therefore, the following declarations shall
Douglas Black is the rightful registrant of the
domain name, "canadian.biz" as against Molson
Molson Canada has no valid rights, title, or
interest in the domain name "canadian.biz" as
against Douglas Black.
The applicant shall have his costs of the
application. If counsel cannot agree on costs they may
provide me with written submissions on costs.
B. WRIGHT J.