ICBC adopted a number of official marks, including the acronym “ICBC”. Stainton Ventures Ltd. (Stainton) operates a commercial website called “ICBCadvice.com” and owns the domain names <icbcadvice.com> and <icbcadvice.ca>. ICBC believed Stainton was using its official mark without authorization, and commenced an action in the Supreme Court of British Columbia seeking a declaration to that effect and various orders, including one requiring transfer of the domain names to it. Following a summary trial, the Court dismissed the majority of ICBC’s claims (decision here). In particular, the Court refused to grant an injunction, or to require the transfer of the domain names. It is from those refusals that ICBC appealed.
ICBC argued that the trial judge erred by failing to apply the correct tests for determining breaches with respect to passing-off. It further argued that the judge erred in finding the use of the websites did not violate the Trade-marks Act or amount to passing off.
The Court of Appeal held that “even if 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.” The Court of Appeal also held that it would be understood 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. In the Court of Appeal’s view, the most that person would conclude is that the website likely had something to do with the corporation. Therefore, the Court of Appeal agreed with the trial judge that the websites did not contravene sections 9 and 11 of the Trade-marksAct. For similar reasons, the Court of Appeal also rejected ICBC’s arguments with respect to passing-off. The appeal was dismissed.