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Generic Top Level Domain Name (gTLD) Decisions |
Molson Canada v. %2d%2d
Claim Number: FA0204000112451
PARTIES
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.
A.
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.
B.
Respondent
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.
DECISION
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
U.S.D.J. (Retired)
Dated: June 11, 2002
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