Molson Canada v. Black, 2012 adapted from Black v Molson Canada (ON SC)

Parties:

For Arbitration pursuant to ICANN URDP (Uniform Dispute Resolution Policy)

Douglas Black - Original Domain Applicant & Current owner of Domain Name CANADIANWINE.BIZ Molson - Original Complainant

FACTS

[1] Black registered the domain name,canadianwine.biz on or about March 27, 2012 through the authorized domain agent, Net Nation.

[2] Black complied with the only ICANN conditions/restrictions on registering ".biz" domain names, which are as follows: (taken from ICCAN

a. Registrations in the .BIZ TLD (Top Level Domain) must be used or intended to be used primarily for bona fide business or commercial purposes;

b. 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.

[3] Black admits that he did not undertake any preparations to immediately develop and use the domain name,Canadianwine.biz.

[4] The intention was to eventually use the website for promoting a wine branded "Proudly Canadian Vintage Wine" which will be sold across Canada.

[5] The applicant was successful in attaining the registration for the domain "Canadianwine.biz".The Trademark associated with the domain is shown below:

Vintage Wine

[6] On or about April 10, 2012, the applicant was contacted by Lori A. Ball, who identified herself as "Manager, Legal Administration, and Secretary" forMolson Canada.

[7] Ms. Ball advised that her company sold "a well-known brand of beer called, 'CANADIAN', that was the subject of aCanadiantrademarkregistration".

[8] Ms. Ball further demanded that, as a result, the applicant must transfer the domain name toMolsonCanada or she would initiate a complaint with ICANN over the applicant's registration of the domain name.

[9] On April 30, 2012, replied to Ms. Ball via e-mail, 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.

[10] Black also advised Ms. Ball that the word "Canadian" is an "incredibly generic" term and that he believed that his registration ofcanadianwine.biz was perfectly valid.

[11] In an e-mail to the applicant dated April 24, 2012, Ms. Ball indicated to the Defendant Black that she felt MolsonCanada's claim had merit and would proceed with the mandatory ICCAN arbitration.

[12] Ms. Ball's e-mail further states:

[12.1] 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 Canadianwine.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 feel this is a distinct possibility.

[12.2] Moreover, regardless of your intentions, the fact remains that by registering the domain nameCanadianwine.biz, you are preventingMolsonfrom 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 stands.

[13] On April 26, 2012 MolsonCanada commenced a complaint with the ICANN's National Arbitration Forum (the "NAF") against Black in connection with his registration of the domain name "CANADIANWINE.BIZ". 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 commenced.

[14] Pursuant to para. 4(a)&(b) of the UDRP (Uniform Dispute Resolution Policy), the domain name was automatically frozen pending the decision of the arbitrator.

Put yourself in the position of the arbitrator, consider the facts and apply the UDRP process to make a recommendation as to whether, in your opinion, the domain name should stay with Black or if you think Molson's claim is valid, the domain name should be transferred to Molson.

Use the following questions to evaluate your position:

1.Using the Canadian Intellectual Property Office website, perform a trademark search for Molson Canadian registration using the following link;Canadian Intellectual Property Office

a.Is "Canadian" a registered trade mark/name of Molson's?

b.If yes what is the TMA number

c.If yes does there seem to be any limitations or conditions (disclaimers) on Molson's use of the word "Canadian" and if so what are they

d.if no, is/are there a tradename/s owned by Molson's that may be an infringement risk in context of this case?Please provide TMA number/s and any disclaimers if present.

/8 Marks

2.Using the criteria set out under ICANN UDRP 4(a)(b)and applying them to the facts of this case, and the information you have obtained from question 1, make a determination by way of a structured point by point argument as to whether you support the complainant (Molson) or the respondent (Black).Make sure to follow the procedures and definitions set out in the ICANN URDP guidelines.

/6 marks

3.As the arbitrator would you transfer the domain to Molson the complainant or not...please briefly indicate why or why not. /6 marks

Trade Mark Glossary

Disclaimer - Disclaimers are required for the portion of your mark that is merely descriptive, generic, or geographic or it contains a company designation or a well-known symbol such as the dollar sign ($). The reasoning is that these types of words and/or symbols are needed by other people and businesses to describe their goods and/or services. As a result, you cannot claim exclusive rights to these terms.

A disclaimer is a statement made of record in a trademark application or registration to indicate that the owner does not claim any exclusive rights to the disclaimed portion of the mark ...example $ sign, generic word or symbol...unless Unitary Mark (cannot separate out generic word without losing essence of the mark) exp. Tip Your Hat ...you cannot disclaim Your without losing essence of mark.