ICBC Internet Domain Name Challenge Fails

Reasons for judgement were released today by the BC Supreme Court, Vancouver Registry, dealing with the challenge of the use of “icbc” in a domain name not owned or operated by ICBC.
In today’s case (ICBC v. Stainton Ventures Ltd.) ICBC alleged that the use of ‘icbc’ in a domain name used as a marketing tool for personal injury lawyers was misleading and in breach of ICBC’s intellectual property rights.  Mr. Justice Grauer dismissed these aspects of the claim finding that websites that use the name ICBC in their domain that comment on ICBC would not confuse an “average customer of normal intelligence“.  Mr. Justice Grauer provided the following reasons:

[26] Anyone familiar with motoring in British Columbia would, I expect, conclude that “ICBCadvice.com” was probably about the Insurance Corporation of British Columbia.  ICBC is, after all, a very large institution that is the subject of widespread public commentary.  In this context, would British Columbians be likely to mistake “ICBCadvice.com” for ICBC’s official mark?  I think not.  More probably, I find, they would take it as identifying the subject-matter of the site, not whose site it is.

[27] I therefore conclude that the defendant has not acted contrary to sections 9 and 11 of the Trade-marks Act in its use of the website/domain name “ICBCadvice.com”.  The same logic applies to the defendant’s use of the domain names <icbcadvice.ca>, <fighticbc.com> and <fighticbc.ca>.

[28] In my view, the defendant’s use of the acronym “ICBC” throughout its website also does not contravene the Trade-marks Act.  The defendant does not use that acronym as a “trade-mark or otherwise” in the sense required, which is the use of the mark in connection with its business in some way that is intended to identify and distinguish its products.  Rather, it simply uses the acronym to identify the plaintiff, as thousands do every day, and as I do in these reasons…

[47] As the Court of Appeal observed in Private Career Training Institutions Agency v. Vancouver Career College (Burnaby) Inc., 2011 BCCA 69, 14 B.C.L.R. (4th) 358 at para. 35, “the consumer must be given credit for having normal intelligence.”

[48] In the context of British Columbia’s universal automobile insurance scheme, I am satisfied that 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.

[49] I conclude that the plaintiff’s claim based upon the common law and statutory tort of passing-off must be dismissed.