BC Court of Appeal – Lawyers Using "ICBC" in Domain Name Does not Confuse Consumers
Update February 6, 2015 – This week the Supreme Court of Canada dismissed ICBC’s bid to appeal this decision.
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Reasons for judgement were released today by the BC Court of Appeal confirming that plaintiff lawyers can use “ICBC” in their website domain name and that this does not lead to consumer confusion.
In this week’s case (ICBC v. Stainton Ventures) 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. This argument was dismissed at trial. ICBC appealed arguing “the relevant consumer, having the familiarity but imperfect recollection of the ICBC Official Marks, would likely be led to believe that ICBC itself is offering advice on its business, wares and services, when viewing such marks as a matter of first impression”.ICBC
The BC Court of Appeal disagreed and dismissed ICBC’s appeal. In doing so the Court provided the following reasons:
[37] I am unable to accept this argument as it fails to give the “relevant consumer”, i.e., an Internet user, credit for even the most basic understanding of the function of a domain name. Even though there is some resemblance between ICBCadvice.com and ICBC’s family of marks, the average Internet user with an imperfect recollection of ICBC’s marks would not likely be mistaken by the domain name. They understand, for example, that a domain name which, in part, contains the name of a business or its acronym will not necessarily be affiliated with or endorsed by that business and may, instead, be the subject matter of the website or entirely unrelated to that business. As well, they understand that it is necessary to view a website to determine whose site it is. While I appreciate that Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772, involved a dispute over a trade-mark rather than an official mark, it is noteworthy that the Court attributed a reasonable level of intelligence to “the casual consumer somewhat in a hurry”: paras. 56-58. In the present context, to paraphrase a passage from Michelin & Cie v. Astro Tire & Rubber Co. of Canada Ltd. (1982), 69 C.P.R. (2d) 260 (F.C.T.D.), quoted with approval in Mattel, Inc., one must not proceed on the assumption that average Internet users are completely devoid of intelligence or of normal powers of recollections or are uninformed as to what goes on around them.
[38] ICBC submits this Court must be cautious to avoid failing to differentiate the test applicable to official marks from the “source confusion” test applicable to trade-marks under s. 6 of the Trade-marks Act. In its oral submissions it repeatedly adverted to the need to avoid applying the “source confusion” test in the context of official marks. While different tests do apply, it must be kept in mind that any mark, including an official mark, serves an identification function, whether as to source, endorsement, or otherwise. ICBC’s submission that “the relevant consumer, having the familiarly but imperfect recollection of the ICBC Official Marks, would likely be led to believe that ICBC itself is offering advice”, suggests that ICBC appreciates that one of the objectives of the official-marks regime is to protect the public by prohibiting the use of a mark which so nearly resembles an official mark that a person seeing that mark would mistakenly believe it to be the rights-holder’s mark.
[39] As indicated above, I am unable to accept that the average Internet user does not appreciate that domain names—which are limited to short combinations of alphanumeric characters—are often merely descriptive of the subject matter of the website to which the domain name resolves, rather than indicating affiliation, source, or endorsement. Put otherwise, a person who conducted a search—using, for example, the terms “ICBC” and “advice”—which returned ICBCadvice.com in its list of results would not, based solely on observing that domain name, mistakenly believe that the “advice” referred to is provided or endorsed by ICBC. Neither would they, as a matter of first impression, be mistaken by the fact that the domain name starts with “ICBC”. The most that person would conclude is that the website likely had something to do with the corporation.
[40] In the result, I agree with the trial judge that the website ICBCadvice.com and its related domain names do not contravene ss. 9 and 11 of the Trade-marks Act.