A US arbitrator has ruled that a Toronto man is not permitted to
use the domain name Canadian.biz and must turn it over to Molson
Canada, Canada’s largest brewer of beer. Molson Canada brought a
complaint to the National Arbitration Forum against Douglas Black,
the domain name owner, citing the “confusing similarity” between
the domain name and its famous brand of beer.
Molson, which obtained a trade mark for the word ‘Canadian’ in
1998, owns hundreds of registered trade marks and pending trademark
applications in Canada, the US and at least 100 other countries
throughout the world. The company claimed that it has used the
‘Canadian’ trade mark in association with alcoholic beverages since
1959.
The arbitrator found that the domain name is “identical to a
trademark in which [Molson] has rights.” According to the decision,
Black has no rights or legitimate interests in respect of the
domain name.
The arbitrator also found that the registration and use of the
domain name “four years after [Molson’s] registration of its
trademark and almost 50 years subsequent to [Molson’s] first use of
the mark” constitutes bad faith.
Mr Black, a web site developer, said: “I registered this name
because I am Canadian and want to develop a Canadian business
directory and on-line meeting place for Canadian business people.”
He also claimed that the domain name ‘Canadian.biz’ is “clearly
generic”. He said he would take the case before the Ontario
Superior Court of Justice.
