Molson Canada v. %2d%2d
Claim Number: FA0204000112451
Complainant is Molson Canada, Toronto, Canada (“Complainant”) represented by Barry Hutsel, of Macera & Jarzyna LLP. Respondent is %2d%2d, Ontario, Canada (“Respondent”).
The domain name at issue is <canadian.biz>, registered with Blueberry Hill Communications, Inc.
The undersigned, Robert R. Merhige, Jr. is the designated Panelist and hereby certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 14, 2002.
On May 30, 2002, pursuant to STOP Rule 6(b), the Forum appointed Robert R. Merhige, Jr. as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant, Molson Canada, is reputed to be Canada’s largest and pre-eminent brewer of beer. Founded in 1786, it is now 100% owned by Molson, Inc., which also owns a 49.9% interest in the Coors Canada partnership and a 51.1% interest in Molson USA, which markets and distributes the Molson brands in the United States. It has approximately 3,600 employees in six breweries across Canada. Molson owns hundreds of registered trademarks and pending trademark applications in Canada, the United States and at least 100 other countries throughout the world.
Molson in particular owns trademark registration no. TMA490,244 in Canada for the specific brand trademark CANADIAN. Molson has used the CANADIAN trademark in Canada in association with brewed alcoholic beverages, since at least as early as 1959. Additionally, the record reflects Complainant’s trademark registration as well as an application owned by Molson in the United States that combine the corporate trademark MOLSON with the brand trademark CANADIAN.
The record reflects as well that sales volumes for Molson’s CANADIAN brand of beer have been in excess of between 2 and 2.7 million hectoliters per year since 1991. The record further reflects that total marketing expenditures incurred by Molson to promote its CANADIAN brand of beer in Canada in the fiscal year 2000 totaled in excess of $100 million. The record reflects as well that Molson’s extensive trademark rights in the word CANADIAN for use in association with brewed alcoholic beverages as well as a wide variety of clothing items and promotional goods justifies a conclusion that Molson’s CANADIAN trademark is one of exceptional fame.
Complainant asserts as well that the Respondent’s registered owner is identified as “%2d%2d,” 24%20Hammersmith%20Ave., Toronto, Ontario. This is neither a real, existing or legal entity. This contention is premised on the fact that Complainant herein caused a NUANS Pre-Search for “%2d%2d” to be conducted which encompassed searches of all provincial and federal company name databases in Canada, including Ontario business names, trade names in British Columbia, and the Federal Trademarks database. This search determined that the name “%2d%2d” is not contained in any of the searched databases.
The Response filed herein has been submitted by Douglas Black, whose address is given as 24 Hammersmith Avenue, Toronto, Canada, M4E 2W4. Douglas Black asserts that he is “acting as my own authorized representative, Douglas Black.” He asserts that he registered the domain name in issue using his full name and his full address. He contends that the “%2 problem is a common computer glitch and is binary hex code for a space, I believe.” He goes on to state that he has no idea what happened, though he may have accidentally typed his name when registering as Dr. Douglas Black, though he is not in the habit of doing so. He suggested as well that the error could have been caused by “massive drains on Bluehill’s computer systems on the day of registering, since they initiated a complex process for registering that apparently caused some freezing up of their server at the deadline time . . . likely due to the huge demand.” He says that he contacted the registrar, Bluehill, asking them to fix the problem and that Bluehill responded as follows:
This is part of encryption of the data this will all be
straightened out when the lock has been removed which
is when the STOP process has completed. Currently no
information can be changed by anyone. As soon as this
completes you shouldn’t see any of the % signs anywhere
and whom ever the domain name is awarded to their
information should be in their in the correct format [sic]
Without refuting any of the factual assertions contained in the Complaint, except as to the named Respondent, the document executed by Douglas Black contends that he has every intention of using the domain name for legitimate business purposes and “not merely to sell it to Molson or someone else.” The Response asserts: “It is the growth and success of Canadian businesses that use the Internet that I plan to utilize for my own profit-seeking venture by using the canadian.biz domain. I was working toward this goal far in advance of my successful registration of the domain name. That is why I registered it. Finally, in terms of the generic nature of the name, I have, in fact, been operating a Canadian Biz (business) myself for some time, as have tens of thousands of other Canadian business owners, small and large.”
The Response further asserts the registration was not made in bad faith.
For the reasons which follow, I find that the Complainant herein is entitled to the relief sought.
It is beyond dispute that the domain name is identical to a trademark in which the Complainant has rights.
The document filed by Douglas Black in which he claims to be the domain owner of the name in issue makes no assertion contesting the Complainant’s right therein but is of the apparent view that Complainant’s trademark only applies to “brewed alcoholic beverages.”
Paragraph 4(a) of the STOP Policy requires that 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
(3) the domain name has been registered or is being used in bad faith.
The record is unrefuted that Complainant has extensive trademark rights in the word “CANADIAN” for use in association with food, alcoholic beverages and a wide variety of clothing items. It is well established that the top-level domain name extension “.biz” is of no consequence when comparing the subject domain name to the Complainant’s trademark for purposes of determining whether they are identical to a mark in which the Complainant has rights. See Princeton Linear Assoc. Inc. v. Copland o/b/o LAN Solutions, Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain name is not a factor, and hence to be ignored, in a determination as to whether the domain name is identical to a mark in which the Complainant has asserted rights).
It is beyond question that the domain name in issue is identical to the mark in which Complainant has rights.
Neither designated entity styled %2d%2d nor Douglas Black demonstrated any rights or interests in the mark in issue. Additionally, there is nothing in the record of any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Nor does the record reflect that Respondent or Douglas Black have been commonly known by the domain name. See STOP Policy ¶ 4(c)(ii). The statement of Mr. Black, whether made on behalf of the named Respondent herein or himself, that “It is the growth and success of Canadian businesses that use the Internet that I plan to utilize for my own profit-seeking venture by using the canadian.biz domain,” can be characterized only as an unsupported, self-serving allegation which is insufficient to establish any rights or legitimate interests in respect to the domain name in issue. See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).
In accord with STOP Policy ¶ 4(c), Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
I conclude that neither the registered Respondent nor Mr. Black are either the owner or beneficiary of the domain name in issue, nor is the registered Respondent or Mr. Black commonly known by the name.
The contention by Respondent that it or he registered the disputed domain name in anticipation of a business venture fails, as is necessary “to explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict.” See STOP Policy ¶ 4(c)(iii); Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002).
I find that the registration by the Respondent of record, whether it be as it would appear from the official record of Blueberry Hill Communications, Inc., or Douglas Black four years subsequent to Complainant’s registration of its Canadian trademark, and almost 50 years subsequent to the Complainant’s first use of the mark constitutes bad faith.
For the reasons herein stated and pursuant to the authority vested in the undersigned, it is DIRECTED that the registration of the domain name <CANADIAN.BIZ> be forthwith transferred to the Complainant, Molson Canada.
Robert R. Merhige, Jr., Panelist
Dated: June 11, 2002
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