Molson Loses Cybersquatting Judgment and Ordered to Pay Attorney’s Fees in the Ontario Superior Court After Previously Winning Arbitration Domain Name Dispute

August 12th, 2010

This case flies in the face of a seemingly growing trend in cybersquatting domain name disputes. More often than not, when a large company challenges ownership of a domain name that bears the company’s trademark somewhere in the web address that company is awarded the ‘infringing’ domain name. Actually, this is exactly what happened initially in the dispute over ownership of www.Canadian.biz.

cybersquatting and domain name dispute caseThe norm in recent court rulings involving internet litigation has been to reinforce a trend in cybersquatting disputes being decided in favor of large companies. Following are some examples of representative of this trend;

* ArcelorMittal Awarded 5 Cybersquatted Domain Names in WIPO Arbitration Proceeding

* Metropark USA Wins Default ‘in rem’ Cybersquatting Judgment 

* Verizon’s Landmark Cybersquatting Victories in the US Courts 

* BMEZine Contests Ownership BME.com

It came to Molson’s attention that Canadian.biz was owned and used by a Canadian citizen. Molson immediately contacted the domain name owner and requested he transfer ownership of the domain name, citing its trademarked ‘CANADIAN’ as it applies to beer. The domain name owner explained to the brewery that he intended to use Canadian.biz as an all-purpose meeting place for Canadian businesspeople and that he would not be in competition with Molson Canadian beer but despite this, Molson repeated its demand that Black hand over the domain.

At the early stages of this cybersquatting dispute, Molson filed an arbitration dispute over ownership of the Canadian.biz domain name. Canadian citizen and Toronto resident Douglas Black appeared to defend his ownership of the Canadian.biz domain name and as happens all too commonly; the arbitration panel awarded a judgment in favor of the big dogs in the suit.

However, Black wasn’t yet prepared to give up on his domain name. Because the arbitration disputes do not have an appeal process, he contested the arbitration panel’s findings by filing a cybersquatting lawsuit in the Canadian court system.

Black v. Molson was then heard before the Toronto Supreme Court. Delivering the judgment of the court, Justice Blenus Wright determined that Douglas Black is the rightful owner of Canadian.biz and that the beer company Molson has no claim the domain name.

This cybersquatting case represents a big win for the little guy. Not only was the Canadian.biz domain name successfully protected by a private citizen against a huge corporation, but Justice Wright also ordered the corporation (who took the first step in this dispute by initiating the arbitration proceeding) to pay Black’s attorney’s fees!

Factors in favor or Black’s ownership of Canadian.biz;

  • Use of the domain name – 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 Canadian business purposes.
  • Widespread use of the generic word ‘Canadian’ – Wright also noted that hundreds of businesses use the word “Canadian” in their names.

Black’s lawyer in this suit, Zak Muscovitch, is claiming the ruling sets important precedents;

  • “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.”
  • “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.”
  • “And it’s the first case worldwide with respect to a dot-biz decision from a court.”

Muscovitch also doesn’t think Molson will 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.”

Muscovitch says this type of decision in a domain name dispute (where the little guy wins) is uncommon;

  • “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.”
  • “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.”

Black’s thoughts about this cybersquatting dispute over his ownership of Canadian.biz;

  • Although he admitted to being daunted at the outset of the dispute, Black admits to being “pleased” with the decision, “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.”

For more information on this domain name dispute;

DNAttorney (from Toronto (CP)) – Toronto man wins court battle against Molson for rights to Canadian.biz