On July 7, 2002, the fight over the Canadian.biz domain name was taken to the next level. The registrant of the domain name appealed the previous National Arbitration Forum ("NAF") decision to the Ontario Superior Court. The dispute resolution panellist of the NAF had ordered that the domain name Canadian.biz be transferred to Molson Canada, owners of the trade-mark "Canadian". In its July 18, 2002 decision, the Ontario Superior Court found that Molson had no valid rights, title or interest in the domain name. In coming to its decision, the Court applied the same STOP Policy 3-part test that was used by the NAF. To prove that a domain name should be transferred, all three elements must be proven. The domain name must be identical to the trade- mark; the respondent must have no rights or legitimate interests in the domain name; and the domain name must have been registered or was being used in bad faith. The Court found that Molson had failed to prove all three elements. In his decision, Justice Blenus Wright stated: "Simply because a domain name is identical or similar to a trademark name should not result in the transfer of the domain name to the trademark owner. In my view, unless there is some evidence that the use of the domain name infringes on the use of the trademark name, a person other than the owner of the trademark should be able to continue to use the domain name." The Court pointed to the registration of the generic name "Canadian" as a trade-mark as the fundamental problem and pointed out the fact that the use of the word "Canadian" as a trade-mark was limited, in the trade-mark registration itself, to brewed alcoholic beverages. For a copy of the Ontario Superior Court decision, visit: http://www.udrplaw.biz/BlackvMolson.pdf For a copy of the E-TIPS summary of the original decision by NAF, visit: http://dww.local/?p=74 For a copy of the original NAF decision, visit: http://www.arb-forum.com/domains/decisions/112451.htm

E-TIPS® ISSUE

02 08 01

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