A "Canadian" Brewhaha

Doug Black, a Canadian citizen, graduated from the University of Toronto and started a business as a research consultant and website developer in education, transportation and driver safety.

In late 2001, 4Domains Inc., a company that sells domain names[1] on the Internet to the public, held an auction for the ".biz" domain name registry.Black participated in the auction and after a long and complicated process of bids, was able to register the domain name "Canadian.biz."It cost him $49 U.S. to register the domain name.

Since Mr. Black could not count on being the winner of the auction, he did not undertake preparations to develop and use the domain name, Canadian.biz, except to interact with business people.On April 10, 2002, Mr. Black received a telephone call from the lawyers for Molson Coors Brewing Company ("Molsons").The lawyer advised Mr. Black that Molson had the registered Canadian trademark for the word "Canadian" and demanded that he transfer the domain name to Molsons.

Mr. Black subsequently responded to Molsons indicating that he did not intend to use the domain name in connection with beer so there would be no public confusion.He also said that the word "Canadian" was too generic to be trademarked and that he intended to keep and use "canadian.biz".

Molsons responded that in order to protect their trademark they intended to proceed with legal proceedings. Molsons filed an arbitration complaint with the National Arbitration Forum that was set up to deal with Internet domain name disputes.Molsons won the arbitration, but then Black applied to the court for a different result.

QUESTIONS:

1.What three things does Molsons have to prove to stop Mr. Black from using the domain name "Canadian.biz" assuming he does not use it to market or sell beer or beer-related products?

2.Do you think Molsons can establish each of those three things?Why or why not?

[1] A domain name is a unique name that acts as an identifying address for a specific website on the Internet much like your home address acts as an identifying address for a specific geographic location (Domain Name. (n.d.) TechTerms.com. Retrieved from echterms.com/definition/domain_name).