Teresa Scassa - Blog

Monday, 07 May 2012 09:30

Trademark Infringement and the Use of Trademarks with Modifying Language in Domain Names: A Recent Court Decision

Written by  Teresa Scassa
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Insurance Corp. of British Columbia v. Stainton Ventures Ltd. is a recent decision of the British Columbia Supreme Court that addresses the issue of the use of trademarks in domain names. The plaintiff in the case, the Insurance Corp. of British Columbia (ICBC) objected to the use by the defendant Stainton Ventures Ltd. of its ICBC mark in its domain names, on its website, and on a booklet which it produced for sale. The defendant, through its website and booklet, offered advice on how to deal with B.C.’s motor vehicle insurer.

The defendant’s website was initially established in 2006 with the URLs <fightICBC.ca> and <fightICBC.com>. The site provided information about dealing with ICBC, and also listed the names and contact information of health care professionals. At the time, ICBC contacted the listed health care professionals and drew their attention to the listings. The defendant received feedback from a number of these professionals, who apparently objected to the rather adversarial domain name of the website. It subsequently changed its business cards, website references and other materials to ICBCadvice, and registered the new domain names of <icbcadvice.ca> and <icbcadvice.com>. In 2008, it began offering for sale from its website a publication titled ICBC Claim Guide.

In 2009 the defendant received its first cease and desist letter regarding the use of the ICBC acronym. Justice Grauer of the B.C. Supreme Court noted that although it was only in 2008 that there was an actual commercial offering from the site, it was clear from the outset that the site had served a marketing function for the defendant’s law practice. After receipt of the cease and desist letter, the title of the claim guide was changed to ICBCadvice Claim Guide. No other concessions were made by the defendant.

The plaintiff applied by way of summary trial for declarations that the defendant was infringing its rights in its official mark ICBC, that it was passing off its wares and services as those of ICBC, and that it was in violation of s. 52 of the Competition Act for having made false or misleading representations. The court ruled against ICBC on all counts.

The first issue was whether the defendant had infringed the plaintiff’s rights in ICBC’s official mark “ICBC”. Section 11 of the Trade-marks Act provides that “No person shall use in connection with a business, as a trade-mark or otherwise, any mark adopted contrary to section 9 or 10 of this Act....” Section 9(i)(n)(iii) prohibits the adoption of a mark “in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for” an official mark. Justice Grauer rejected the plaintiff’s argument that the defendant’s mark was identical to its ICBC mark because it reproduced the ICBC mark. Instead, he chose to consider whether “ICBCadvice” so nearly resembles “ICBC” as to likely be mistaken for it. Justice Grauer was persuaded by the defendant’s argument that there was no evidence of confusion on the part of visitors to the website. He noted: “The evidence just does not support the contention that through its domain names, the defendant either intended or accomplished the redirection to its site of traffic looking for ICBC’s own website...” (at para 25). Further, he found that drivers in B.C., who were very familiar with the ICBC mark, would not likely be confused into thinking that the ICBCadvice domain names were linked to the official mark. He concluded that “they would take it as identifying the subject-matter of the site, not whose site it is” (at para 26). However Justice Grauer does not consider whether consumers would be likely to think that the subject matter of the site (advice about ICBC) emanated from the insurance company itself, as opposed to some other party. In fact, the official ICBC site also provides advice to customers on how to proceed with making a claim.

Justice Grauer noted that he also would not have found the “fighticbc” domain names to be infringing. There would seem to be at least an argument that “fighticbc” is much less likely to be confusing than “icbcadvice”, since ICBC is less likely to advocate fighting itself than it might be to provide advice to motorists on how to proceed with a claim. The discussion in this respect is unsatisfying. While most domain name cases seem to reject domain names for critical websites that merely use the unmodified trademark of the target company, there is still a lack of clarity as to what kind of modifying language will suffice to make it clear that the site to which the domain name resolves is not that of the target company. In addition, the case law around domain names and critical sites usually involves non-commercial criticism or protest sites; the impact of the commercial dimensions of the defendant’s site in this case is not fully discussed. While I do not necessarily disagree with the outcome of this case, it would have been helpful to have a closer consideration of these key issues.

Justice Grauer did find that the original version of the defendant’s commercial claim guide violated s. 11 of the Trade-marks Act. Its cover featured ICBC in large type with “Claim Guide” below in a much smaller font. However, the revised cover, which reads “ICBCadvice Claim Guide” passed muster. He made an order restraining the distribution of the original guide, but not the revised version.

Justice Grauer dismissed the passing off arguments relating to the website and the domain names. Although it was clear that ICBC had goodwill in its mark, he found that the “ordinary average automobile insurance customer” would not be confused into believing there was a business connection between the defendant’s website and the complainant. Once again, his analysis seems to focus almost exclusively on the issue of actual confusion. He wrote: “I cannot see how an average customer would be deceived into thinking that the website is somehow associated with or approved by ICBC. There is no evidence of either actual confusion or likelihood of confusion, and as noted, a likelihood of confusion is not so obvious that evidence is unnecessary” (at para 44). He rejected the plaintiff’s argument that search engines would turn up the defendant’s site in any search using the term “ICBC”. He wrote: “The behaviour of search engines is not, in my view, evidence of anything other than the operation of an algorithm, and search-engine marketing. It is certainly not evidence of confusion” (at para 46). He went on to ask: “Is the public so naive as to assume that every hit returned to a search for “ICBC” is somehow associated with or endorsed by the Insurance Company of British Columbia? I suspect that the Industrial and Commercial Bank of China would be rather distressed if that proved to be so” (at para 46). In his view, “the average customer of normal intelligence would not be led astray, and would have no difficulty recognizing that ICBCadvice.com would probably relate to how to deal with ICBC in an arm’s length or even adversarial sense, rather than in a manner endorsed by ICBC” (at para 48). Justice Grauer also quickly dismissed the claims of false and misleading representations under the Competition Act.

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