Third Party's Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC's Claim of Trade-mark Infringement
Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC's Claim of Trade-mark Infringement
On July 22, 2014, the B.C. Court of Appeal dismissed the claim of B.C.’s provincial auto insurer, the Insurance Corporation of British Columbia (ICBC), that a personal injury lawyer’s registration and use of domain names incorporating its official mark “ICBC” violated the Canadian Trade-Marks Act.
In Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 the Court held that the domain names <icbcadvice.ca> and <icbcadvice.com> did not infringe ICBC’s rights as internet users will recognize that the term “icbc” in the domain names does not necessarily mean that they are associated with ICBC and might just refer to the subject matter of the websites to which they resolve.
Under s. 9 of the Trade-Marks Act, Canadian armed forces, universities and other designated public authorities (which includes ICBC) are entitled to designate any badge, crest, emblem or trade-mark of their choice as an “official mark”. Once recorded in the national Trade-marks Register, no person other than the holder of the official mark is entitled to use it.
ICBC adopted “ICBC” as its official mark in 1989. It also adopted 23 other official marks that incorporate “ICBC”. The domain names <icbcadvice.ca> and <icbcadvice.com> were being used by a personal injury lawyer whose practice includes acting for people injured in motor vehicle accidents who have claims against ICBC. The website posted at these domains offers information to assist claimants in dealing with ICBC and its adjusters. There was evidence before the Court that the website included several disclaimers stating that it was not connected with ICBC and that there were a number of other domain names incorporating “icbc” being used by parties unconnected to ICBC.
ICBC argued that the domain names were infringing because they so nearly resembled its official mark as to be mistaken for it, and that consumers would therefore likely be led to believe that ICBC itself is offering the advice at the website.
The Court held that it was unable to accept ICBC’s 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.”
The Court held that the average Internet user understands 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.”
The Court of Appeal held that an internet user would not, simply based on observing the domain names, mistakenly believe that the advice being offered via the website was provided or endorsed by ICBC.
This decision, which is in line with many others in recent years, is a strong statement by B.C.’s top court that Internet users have become more sophisticated in their ability to interpret what they find online. As a result, something more than just use of an official mark in a domain name may be required to make out a claim of infringement.