What does an average internet user understand when they see a domain name on the internet?
The Facts
Insurance Corporation of British Columbia (“ICBC”)
ICBC is a provincial Crown corporation, established by statute in 1973 to provide universal automobile insurance to British Columbia motorists. It is the predominant automobile insurer in British Columbia as the owners of vehicles registered in the province must obtain basic insurance coverage from it.
ICBC is a “public authority” under the Trademarks Act and has adopted a number of “official marks”, including a registration for the acronym ICBC. Twenty-three of its official marks incorporate this acronym as a component of a design presentation.
Stainton Ventures Ltd. (“Stainton Ventures”)
ICBCadvice.com is a commercial website operated by Stainton Ventures and used as a marketing tool by a lawyer who acts for persons involved in claims against ICBC. It also owns the internet domain names <icbcadvice.ca> and <icbcadvice.com>, both of which resolve to the ICBCadvice.com website. The site offers free advice on dealing with ICBC and contains links to “Recommended Service Providers” under the followings headings: Plaintiff Lawyers; Doctors; Chiropractors; Physiotherapists; Massage Therapy; and MRI Clinics.
The Action
In 2009, ICBC commenced an action against Stainton Ventures in the Supreme Court of British Columbia seeking a declaration that Stainton Ventures was using its official mark without authorization and a claim for passing off, including an order requiring the transfer of the above domain names to ICBC.
The action proceeded to a summary trial. ICBC’s evidence included an affidavit which attached as exhibits screenshots of the ICBCadvice.com homepage on various days in 2007, 2008, and 2011. It was readily apparent from the pages of the website that it was not affiliated with ICBC. This was made clear through the use of a number of written disclaimers. Stainton Venture’s evidence included an affidavit that showed approximately fifteen other websites were operated in association with domain names that included as a first component the letters ICBC.
Official Marks
Official marks seem to be unique to Canada. Section 9 of the Trademarks Act provides that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any mark adopted and used by any public authority, in Canada as an official mark for wares or services. This protection is only available if the Registrar has, at the request of the public authority, given public notice of the adoption and use of the mark.
The determination of whether a mark has been adopted contrary to section 9 is not the same as that applied for determining whether a regular trademark has been infringed. If the mark in use by a person so nearly resembles the official mark as to be likely to be mistaken for it, the use of that mark may be prohibited even if there is no likelihood of confusion. The test is restricted to the resemblance between the official mark and the adopted mark.
The Judge said that the onus of establishing mistake or confusion based on resemblance was on ICBC but the evidence presented by ICBC did not discharge the onus. ICBC could have presented direct evidence from those alleged to have been led into mistake or confusion, but they did not. Further it was open to ICBC to present their own independent survey evidence and they chose not to do so.
The Judge also said that ICBC was a very large institution that was the subject of widespread commentary. The relevant public in British Columbia would likely conclude that ICBCadvice.com identified the subject matter of the site not who owned the site.
The claim for passing off was also dismissed. The Judge said that he could not see how an average customer would be deceived into thinking that the website was associated with or approved by ICBC. There was no evidence of either actual confusion or likelihood of confusion, and a likelihood of confusion was not so obvious that evidence was unnecessary.
ICBC appealed to the British Columbia Court of Appeal. In substance it argued that the relevant consumer, having familiarity but an imperfect recollection of the ICBC Official Marks, would likely be led to believe that ICBC itself was offering advice on its business, wares and services, when they viewed such marks as a matter of first impression.
The court refused to accept the argument. They said that such an approach failed 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 was some resemblance between ICBCadvice.com and ICBC’s family of official marks, the average Internet user with an imperfect recollection of ICBC’s marks would not likely be mistaken by the use of the domain names in issue. They would 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 would understand that it is necessary to view a website to determine whose site it is. It was not correct to proceed on the assumption that average Internet users were completely devoid of intelligence or of normal powers of recollection or were uninformed as to what goes on around them.
Comment
The result in the case seems correct since it seems to have been brought without providing the necessary evidence to support the claims. The statements made by the judges who heard it are interesting but in the absence of any empirical evidence it remains to be seen whether this is what takes place in the real world.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.