Thanks to a recent decision made by the BC Court of Appeal, the long chapter on the Insurance Corp. of B.C.’s (ICBC) legal battle to shut down a website sharing its name can finally close.
In
Vancouver Community College v Vancouver Career College, 2017 BCCA 41 the court established that trademark confusion must be assessed when a consumer first encounters the trademark online.
This includes searches done on search engines like Google, and not just when the user reaches the actual website being searched for.
The Court of Appeal also reconciled competing decisions on the use of trademarks in domain names—one of which was ICBC’s case,
Norton Rose Fulbright reported.
Similar-sounding domain names can cause confusion, but the court managed to clarify the matter. It was decided that the use of a trademark in a domain name is unlawful, unless a part of the domain allows consumers to distinguish between the owner of the trademark and the owner of the domain name without reference to the underlying website.
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ICBC lost its case against ICBCadvice.com in
Insurance Corporation of British Columbia v Stainton Ventures Ltd., 2014 BCCA 296, arguing that the latter had violated its trademark. ICBCadvice.com is a website that provides consumers with information on how to deal with the public insurer.
The case dragged on, and was even brought all the way to the Supreme Court of Canada in 2015, which then dismissed the case. The court decided then that users must visit an underlying website before any confusion can arise.
“This result not only helps maintain the public service website, ICBCadvice.com, but also allows dozens of other websites that use the term ‘ICBC’ to continue to operate,” lawyer Wesley Mussio, representing website operator Stainton Ventures Ltd., said in a statement in 2015. “Indeed, a simple Google search results in dozens of websites that use ICBC in their name. Had ICBC been successful, it would have had a major impact on many websites run by ICBC service providers including lawyers and repair shops. All these websites would have had to shut down or change their names had the courts sided with ICBC.”
Due to the new ruling, the dismissal of ICBC’s claim has been reconciled. It is deemed that the additional domain suffix “advice” on ICBCadvice.com allowed consumers to tell the website apart from the one actually owned by the insurer.
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