UDRP CASE SUMMARY ARCHIVES - DOMAIN NAME LEGAL DISPUTES

Toronto man wins court battle against Molson
for rights to Canadian.biz

BENSON LEE

TORONTO (CP) - A businessman has won a court battle against beer giant Molson over the rights to the Internet domain name Canadian.biz. In an Ontario Superior Court ruling released Thursday, Justice Blenus Wright determined that Douglas Black is the rightful owner of the domain name and Molson has no claim to it. Black's lawyer, Zak Muscovitch, was elated with the court's decision.

"This was a peculiar case in the sense that it's very rare in law, especially in Canada, for a single person to take on a large corporation like this," Muscovitch said. "And the fact that he won so handily really says something because it's not easy to beat a large company that has unlimited financial resources.

"If he hadn't brought this case to an Ontario court, he would have lost his domain name to Molson Canada for no legal reason whatsoever."

Molson Canada challenged Black's ownership of the Web site soon after he registered it in March. The brewery holds the trademark for the word Canadian as it applies to beer.

Despite telling the brewery he intended to use the Web site as an all-purpose meeting place for Canadian businesspeople - not to compete with Molson Canadian beer - Molson demanded Black hand over the Web site.

After Black refused to do so, Molson took the matter to an Internet arbitration panel, which ruled in Molson's favour.

Because the arbitration panel has no established appeal process, and can be overruled by a court of law, Black's case went before Ontario Superior Court.

Black said he was "pleased" by the court's decision, although he admitted to being daunted at the outset.

"I found it stressful because of the size of the company, but I think we were pretty confident from the start based on trademark law," he said.

Wright noted in his ruling that Molson did not outline how it intended to use Canadian.biz, and that there was sufficient evidence that Black intended to use the domain name for business purposes.

Wright also noted that hundreds of businesses use the word "Canadian" in their names.

Molson was also ordered to pay Black's legal fees.

Muscovitch said the ruling sets important precedents.

"On a legal level, it's the first case in Canada that a person who has lost their domain name at the quasi-arbitration stage ... has appealed to a Canadian court," he said.

"And it's the first case worldwide with respect to a dot-biz decision from a court."

Muscovitch said he does not expect Molson to appeal the ruling.

"I don't (believe) that they'll appeal because this is a convincing and decisive case that should never have been brought to court in the first place," he said.

Despite everything, Black said he wasn't considering boycotting Molson products.

"No, I don't think so. Although I don't tend to buy them anyway."

Representatives for Molson could not be immediately reached for comment.

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