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Canada (492,936)
B LAW402 (43)

Black v. Molson Canada.pdf

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University of Alberta
Business Law
B LAW402
Elaine Geddes

Ontario Supreme Court Black v. Molson Canada Date: 2002-07-18 Zak Muscovitch, for applicant. Barry Hutsel and Elizabeth Elliott, for respondent. [1] B. WRIGHT J.:—This application is th e result of a domain name dispute between the applicant and the respondent, in respect of the domain name, [2] 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. 2002 CanLII 49493 (ON S.C.) Facts [3] 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 website developer in education, transportation and driver safety. [4] The applicant registered the domain name, on or about March 27, 2002. The applicant registered the domai n name through an online auction. The auction process was open to the general public. [5] The applicant complied with the only restrictions on registering “.biz” domain names, which are as follows: a. Registrations in the .BIZ TLD must be used or intended to be used primarily for bona fide business or commercial purposes; b. Registrations in the.BIZ TLD must comp ly 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 init iated before the Comm encement-of-Service Date, a modified version of the UDRP, kn own as the Start-Up Trademark Opposition Policy (“STOP”) will apply. [6] Various companies are accredited by the Internet Corporation for Assigned Names and Numbers (“ICANN”) to sell or resell domain names to the public. These companies are called domain name “registrars”. 4Domains, Inc., doi ng business as Blueberry Hill Communications Inc. (the “registrar”), is such a domain name registrar and was the one that the applicant used to register The registrar, 4Dom ains, Inc., is more precisely described as [a]domain name re-seller that registers domain names on behalf of Neulevel Inc., which is the exclusive operator of the .biz domain name registry. [7] Since the domain name was not available through 4Domains, Inc. on a first-come, first-served basis, but was the subject of com peting bids for registration, the applicant could not count on being the successf ul bidder and subsequent regi strant. Accordingly, the applicant did not undertake any preparati ons to develop and use the domain name,, except for concei ving of a web portal site and meeting place for Canadian businesses and entrepreneurs to meet, intera ct and conduct business together.[8] The registration of this domain name was part of a complicated round-robin process initiated by Neulevel Inc., which involved opening up regist ration attempts to the 70 or more domain 2002 CanLII 49493 (ON S.C.) name registrars or re-sellers worldwide. Each re-seller was allowed to submit just one person’s name, which was put into the round-robin process. [9] 4Domains, Inc. was one of the few re-sellers 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. subm itted just the one winning bid to Neulevel Inc. to enter the round-robin pr ocess, which was a draw from among all of the names submitted for that same domain from all the re-sellers. [10] 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. [11] On or about April 10, 2002, the applicant was contacted by Lori A. Ball, who identified herself as “Manager, Legal Admi nistration, 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 trademark 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. [12] On April 30, 2002, the appl icant replied to Ms. Ball via e -mail, and advised her that he had no intention of using the do main name in connection with be er 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 was perfectly valid. [13] In an e-mail to the applicant dated April 24, 2002, Ms. Ball admitted to the applicant that the sole basis and reason for Molson Canada’s cl aim to the applicant ’s domain name was their concern that it may be inappropriately used by someone in the future. [14] Ms. Ball’s e-mail 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 While we appreciate that it may not be your present intention to use this domain name to create negative publicity or confusion in t he public’s mind about our product or our 2002 CanLII 49493 (ON S.C.) company, we cannot be certain that your plans will not c hange or that some possible future owner of the domain name will have the same honourable attitude. Moreover, regardless of your in tentions, the fact remains that by registering the domain name, you are preventing Mols on from reflecting its trade-mark in a corresponding domain name. In order to pr otect 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 stands. Prior Proceeding [15] 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 a ccredited 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 “.bi z” domain name, the app licant agreed in his Registration Agreement to submit to such an administrative hearing, if commenced. [16] The NAF is mandated to employ the ICANN Start-up Trademar k Opposition Policy (“STOP”), the ICANN Uniform Dispute Resolu tion Policy (“UDRP”) and STOP Rules, to resolve complaints. [17] On May 30, 2002, the NAF a ppointed Robert R. Merhige Jr. to adjudicate the dispute. In his decision dated June 11, 2002, he directed that the regist ration of the domain name be forthwith transferred to Molson Canada. [18] Pursuant to para.4(k) of the UDRP and STOP, by issuing t he 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. [19] The criteria used by Mr. Merhige in arriving at his decision were: Paragraph 4(a) of the STOP Policy requires t hat the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred: (1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and 2002 CanLII 49493 (ON S.C.) (3) the domain name has been registered or is being used in bad faith. [20] I note that in order forthe complainant Molson Canada to be successful in having the domain name transferred to it, all three elements must be proven. Identical Trademark [21] Molson Canada owns the registered trademark “CANADIAN”. Mr.Merhige concluded, “It’s beyond question that the domain name in iss ue is identical to the mark in which [the] Complainant has rights.” [22] But is that the end of the enquiry? Does that m ean that Molson Canada should automatically have the domain name 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”. [23] In the registrati
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