A businessman who wants to be Canadian -- or at least have a Web site that is -- will be in court tomorrow to fight beer giant Molson Canada for an Internet address that shares the name of its best-selling beer.
"I'm not looking for any financial recompense, I just want to use the domain name and create a publicly accessible Web site and run a small business," said Douglas Black.
The Web site developer and consultant registered the domain name Canadian.biz through a lottery process in March, soon after new Web site domains were made available to the public, including the suffix .biz.
When Molson Inc. learned that Mr. Black planned to use the name Canadian.biz, the brewery demanded he transfer the name to Molson Canada.
Mr. Black's assurances that he had no intention of using his site in connection with Molson's product did not dissuade the company.
"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 company, we cannot be certain that your plans will not change or that some possible future owner of the domain name will have the same honourable attitude," reads an e-mail sent to Mr. Black from Molson's Lori Bell in April.
Mr. Black refused to transfer the name, saying in his affidavit that he felt Canadian.biz "was a generic domain name that was capable of a multitude of uses, and did not inherently infringe another person's trademark, as coca-cola.com would, for example."
In early May, Molson brought the disagreement to an international Internet arbitration panel, the National Arbitration Forum, in Minnesota. No such panel exists in Canada.
A retired U.S. judge ruled Mr. Black had registered the name in bad faith, what is known as "cybersquatting."
"I find that the registration . . . four years subsequent to (Molson's) registration of its Canadian trademark, and almost 50 years subsequent to (Molson's) first use of the mark constitutes bad faith," Robert Merhige wrote in his decision, released June 19.
The ruling shocked Toronto lawyer Zak Muscovitch, an expert in domain-name cases and lawyer for Mr. Black.
"I learned of this decision and couldn't believe it," he said.
"I felt this man needed to be defended and that a Canadian court should be the final adjudicator of this dispute rather than this American judge with this quasi-arbitration system."
A Canadian judge might be more familiar than a U.S. judge with Molson's business and the trademark, which applies only to "brewed alcoholic beverages," Mr. Muscovitch said.
But Molson is only trying to protect its trademark and clarify things for consumers, company spokesman David Jones said.
"We're not trying to take ownership of the term 'Canadian' and lock it into only ever only being connected to Molson beer," Mr. Jones said.
"Once you get a trademark so universally known and associated with your company and your product, you have a certain responsibility to take action and clear up any confusion that exists between your brand name and someone else's brand name."
Another factor influencing Judge Merhige's decision was that when Mr. Black registered the domain name on-line, his name was recorded as a series of numbers, letters and symbols instead of his actual name.
Mr. Black insisted a computer glitch turned his name into an illegible mess. But both Molson and Judge Merhige maintain the symbols must have been typed intentionally and that Mr. Black is therefore not the owner of Canadian.biz.
Because the arbitration panel has no established appeal process, Mr. Black's case is going before the Ontario Superior Court tomorrow, where Molson and Mr. Black will each ask the judge to declare them the rightful owner of the domain name Canadian.biz.
It will be the first time, according to Mr. Muscovitch, the court has heard an appeal of such a decision.