IN THE SUPREME COURT OF BRITISH COLUMBIA

Date: 20120426

Docket: S095366

Registry:
Vancouver

Between:

Insurance
Corporation of British Columbia,

Plaintiff

And

Stainton Ventures
Ltd.,

Defendant

Before:
The Honourable Mr. Justice Grauer

Reasons for Judgment

INTRODUCTION

[1]          
The defendant operates a commercial website called ICBCadvice.com,
self-described as "a completely FREE online resource outlining all the
issues and complications you may encounter when dealing with ICBC – from start
to finish."  It asks visitors, “ICBC is ready.  Are you?”

[2]          
The defendant also owns the Internet domain names <icbcadvice.com>
and <icbcadvice.ca>, both of which direct the public to the
ICBCadvice.com website.  It used to own the domain names <fighticbc.com>
and <fighticbc.ca>, but these have now lapsed.

[3]          
The website is, in essence, a marketing tool.  Visitors may purchase an
"ICBCadvice Claim Guide" for only $19.95, and are given links to "recommended
service providers" under the headings:  Plaintiff Lawyers; Doctors;
Chiropractors; Physiotherapists; Massage Therapy; and MRI Clinics.  Visitors also
have access to articles including ones penned by the website’s "Featured
Writer", Wes Mussio.  Mr. Mussio, who is counsel for the defendant,
is married to the defendant’s president, sole director and sole shareholder,
Penelope Stainton-Mussio.  He specializes in motor vehicle accident claims.

[4]          
"ICBC" is an official mark of the plaintiff, adopted and used
in accordance with s. 9(1)(n)(iii) of the Trade-marks Act, R.S.C.
1985, c. T-13.  The subsection provides that:

[n]o person shall adopt in connection
with a business, as a trade-mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for,

such an official mark.

[5]          
In these circumstances, ICBC applies by way of summary trial for
declarations that:

(a)        Stainton Ventures Ltd. has adopted and used
prohibited marks contrary to sections 9 and 11 of the Trade-marks Act;

(b)        Stainton Ventures has passed-off its business,
wares and services as and for ICBC’s business, wares and services; and

(c)        further and alternatively,
Stainton ventures has equipped itself to engage in such wrongful conduct or
enable other persons to do so.

[6]          
ICBC further applies for an order that the defendant transfer and assign
to it ownership of the domain names, and seeks injunctive relief.

[7]          
It is helpful to note ICBC’s position that its claims in this action
have nothing to do with the substantive content of the website, but relate
solely to the defendant’s alleged unauthorized use of ICBC’s official marks,
particularly the mark "ICBC".

BACKGROUND

[8]          
The defendant initially operated its website under the name
"fightICBC", which it launched in 2005, and included on it the names
and contact information of various healthcare professionals, without charge.  ICBC’s
initial response was to write on March 28, 2006, to every doctor, chiropractor,
massage therapist and physiotherapist who appeared on the website, stating:

It has come to our attention that
your practice has been listed as a recommended service provider on the
fighticbc.com website.  ICBC has heard from numerous healthcare practitioners
that they have been listed as a recommended service provider on this website
despite not having any affiliation with the site whatsoever.  I am writing this
letter to you at this time to bring this matter to your attention in the event
that you are unaware of it.

[9]          
In late March and early April of 2006, a number of those service
providers requested that their names be removed from the website.  Ms. Stainton-Mussio
then contacted ICBC, ultimately communicating with Alex Van Grondelle of ICBC’s
Fair Practice Review Department.

[10]       
Ms. Stainton-Mussio deposes that it became clear to her from her
discussions with Mr. Van Grondelle that ICBC’s central concern with the
website was the aggressive nature of its name, "fighticbc.com”.  After a
few brainstorming sessions, she came up with an alternative,
"icbcadvice.com" and deposes that she then contacted Mr. Van
Grondelle for ICBC’s approval of the name.  She states that Mr. Van Grondelle
told her that the name was acceptable as it was more neutral, and on that
basis, she made the change to all the print media, the website, business cards,
signs and letterhead.  These changes took place in 2006.

[11]       
Mr. Van Grondelle denies that he gave, or was in a position to
give, any such approval.  Both parties rely on a letter written by Mr. Van
Grondelle to Ms. Stainton-Mussio dated April 10, 2006, in response to her
complaint about ICBC’s letter and its effect on the service providers.  Mr. Van
Grondelle wrote, in part:

With respect to ICBC staff notifying a number of the medical
service providers that they are listed on your website, I can confirm that this
did occur.  However, I do not believe that there is a fairness issue in
advising someone that their company name is listed on a public website.  There
is no indication that ICBC made any implied or express threats to any service
provider concerning their inclusion on your website.  Furthermore, as you know,
ICBC has no influence over whether a claimant goes to one particular medical
service provider or another, with the exception of medical examinations that
ICBC may want to have the claimant attend for an examination to assess their
entitlement to no-fault benefits.  I would suggest that comments that you
received from a number of these service providers speak directly to the
concerns they have regarding your website.  Specifically, they requested that
their names be removed as they did not view your site as being neutral in its
orientation.

I acknowledge that you recently
changed the name of your website to one with a more neutral, information-based
orientation.  I presume that this was undertaken in consideration of some of
the feedback you received from some of the listed service providers.

[12]       
In my view, this letter is inconsistent with ICBC approving the new
website name.  It suggests that the change was due to feedback from the service
providers, not to any position taken by ICBC.  As a result, whatever impression
Mr. Stainton-Mussio may have gained from her discussions with Mr. Van
Grondelle, I am unable to find that ICBC in fact approved or consented to the
defendant’s use of the domain name or website "ICBCadvice.com".

[13]       
It is clear, however, that ICBC, through Mr. Van Grondelle, did not
then complain about any unauthorized use of its mark with respect to either
website name.  That did not occur until May of 2009, when ICBC demanded through
its counsel that the defendant cease using the domain names, and transfer
ownership of them to ICBC.  ICBC also asked the defendant to stop using its
official marks.  ICBC submits that this did not take place until 2009 because
it was only in 2008, after the dealings between Ms. Stainton-Mussio and Mr. Van
Grondelle, that the defendant began to offer the "ICBC Claim Guide" for
sale, thereby commercializing its site.  Be that as it may, the law practice
marketing function of the website was obvious from its inception.

[14]       
The defendant did not comply with ICBC’s 2009 demand, except that at
some point it changed the name of its Claim Guide as illustrated and advertised
on the website from "ICBC Claim Guide" to "ICBCadvice Claim
Guide".  It continues, however, to possess unsold hard copies from the
guide’s first printing, which display the original title.

[15]       
In any event, revenue was and is generated for the defendant through the
sale of advertising (recommended suppliers, particularly personal injury
lawyers, and principally Wesley Mussio Law Corporation), and through the sale
of the Claim Guide.  The Claim Guide is not a brisk seller.

[16]       
The defendant’s intention was and remains to provide a free source of
information to the public about dealing with ICBC, while marketing Mr. Mussio’s
practice and providing it with tax write-offs.

DISCUSSION

A. Has
the defendant adopted in connection with its business an official mark of the
Plaintiff?

[17]       
This question concerns the application of sections 9(1)(n)(iii) and 11
of the Trade-marks Act.  The latter section provides:

11.       No person shall use in
connection with a business, as a trade-mark or otherwise, any mark adopted
contrary to section 9 or 10 of this Act….

[18]       
Accordingly, if the defendant has adopted in connection with a business
any mark consisting of, or so nearly resembling as to be likely to be mistaken
for, an official mark of ICBC, then it is prohibited from using that mark in
connection with its business.

[19]       
In this regard, the plaintiff complains that the defendant has adopted
in connection with its business the mark "ICBC" in the following
ways:

a)    in the
website/domain names "ICBCadvice" and "fightICBC";

b)    in the titles of
the guide, "ICBCadvice Claims Guide" and "ICBC Claims
Guide", as it was formerly advertised;

c)    in the use of
the acronym "ICBC" throughout the website.

[20]       
Although the defendant took the position that, as the website is not
used to generate profits for the defendant, it did not adopt anything "in
connection with a business", that position (not pressed very forcefully)
is unsustainable.  The defendant was clearly operating a business through the
website, which included the sale of its guides, obtaining promotional fees, and
promoting at least one personal injury law practice.  While the website may
have produced little or no profit, the defendant could hardly be described as
an eleemosynary institution.

[21]       
In operating that business, did it adopt a mark consisting of, or so
nearly resembling as to be likely to be mistaken for, an official mark of
ICBC?  The plaintiff argues that the defendant has adopted the official mark
"ICBC" in its entirety, adding only the words
"advice.com".  In this way, the plaintiff asserts, the marks are
identical.

[22]       
I cannot agree with that submission.  "ICBC" and
"ICBCadvice.com" are not identical marks, and that is what is
required if the latter is to be considered as "consisting of" the
former: Canadian Council of Professional Engineers v. APA-The Engineered
Wood Assn. (2000), 184 F.T.R. 55, 7 C.P.R. (4th) 239 at para. 70.  As
that case makes clear, the mere fact that the former is included in the latter
does not make them identical.  Indeed, there are over 150 domain names that
include the reference "icbc" other than ICBC’s own site, ranging from
<icbcsucks.com> to <organicgarlicbc.com>.

[23]       
Accordingly, the question becomes whether "ICBCadvice.com" so
nearly resembles "ICBC" that it is likely to be mistaken for it.  The
test is whether a person familiar with ICBC’s mark, but having an imperfect
recollection of it, would be likely to mistake the defendant’s mark for it: Canadian
Olympic Association v. Coopérative Fédérée de Québec
(2000), 7 C.P.R. (4th) 309 at para. 26 (F.C.T.D.); Canada v.  Kruger (1978),
44 C.P.R. (2d) 135 (Reg. T.M.); Big Sisters Assn. of Ontario v. Big Brothers
of Canada (1999), 86 C.P.R. (3d) 504 (F.C.A.) affg. 131 F.T.R. 161, 75
C.P.R. (3d) 177.  The question is not to be resolved on the basis of a
straight comparison of the marks.

[24]       
As Gibson J. noted in the Big Sisters case, 75 C.P.R. (3d) 177 at
202, the onus of establishing mistake or confusion based on resemblance is on
the plaintiff.  The judge concluded that:

…The evidence adduced simply
does not discharge that onus. … It was open to the plaintiffs to bring direct
evidence from those alleged to have been led into mistake or confusion, but
such evidence was not forthcoming.  Equally, it was open to the plaintiffs to
bring their own independent survey evidence and they chose not to do so.

[25]       
I come to the same conclusion in this case.  The only relevant evidence
is from the defendant, and establishes that no one ever communicated any
confusion or mistake as to whether the website was ICBC’s.  The evidence just
does not support the contention that through its domain names, the defendant
either intended or accomplished the redirection to its site of traffic looking
for ICBC’s own website at <icbc.com>.

[26]       
Anyone familiar with motoring in British Columbia would, I expect,
conclude that "ICBCadvice.com" was probably about the Insurance
Corporation of British Columbia.  ICBC is, after all, a very large institution
that is the subject of widespread public commentary.  In this context, would
British Columbians be likely to mistake "ICBCadvice.com" for ICBC’s
official mark?  I think not.  More probably, I find, they would take it as
identifying the subject-matter of the site, not whose site it is.

[27]       
I therefore conclude that the defendant has not acted contrary to
sections 9 and 11 of the Trade-marks Act in its use of the
website/domain name "ICBCadvice.com”.  The same logic applies to the
defendant’s use of the domain names <icbcadvice.ca>,
<fighticbc.com> and <fighticbc.ca>.

[28]       
In my view, the defendant’s use of the acronym "ICBC"
throughout its website also does not contravene the Trade-marks Act. 
The defendant does not use that acronym as a "trade-mark or
otherwise" in the sense required, which is the use of the mark in
connection with its business in some way that is intended to identify and
distinguish its products.  Rather, it simply uses the acronym to identify the
plaintiff, as thousands do every day, and as I do in these reasons.

[29]       
I see the situation differently, however, in relation to the defendant’s
claim guide as it was originally published and advertised.  Its title consisted
of the acronym "ICBC" in a very large font size on one line, with the
words "Claim Guide" below in a much smaller font size.  Given that
this booklet was intended for commercial use, I conclude that the use of the
acronym "ICBC" in that manner was in fact the adoption in connection
with the defendant’s business, as a trade-mark "or otherwise" of a
mark consisting of ICBC’s official mark.  This is because the defendant used a
mark identical to ICBC’s official mark in a manner intended to identify a
product of the defendant.  That use, in my view, is impermissible.

[30]       
Although the defendant has changed the title and cover of the book as
currently displayed and offered on the website, so that it now reads "ICBCadvice
Claim Guide", the former iteration of the guide remains available in hard
copy form.  In these circumstances, the plaintiff is entitled to an order
restraining the defendant from distributing to any person or organization in
electronic or hard copy form a copy of its Claim Guide using or displaying the
name "ICBC Claim Guide".

[31]       
I accept that the defendant has earned no profit from the sale of its
guide.

[32]       
For the reasons discussed above in relation to the website/domain name
"ICBCadvice.com", the usage "ICBCadvice.com Claim Guide” does
not, in my view, contravene sections 9 and 11 of the Trade-marks Act.

B. Is the
defendant guilty of passing-off?

[33]       
ICBC submits that the defendant has passed-off its business, wares, and
services as and for ICBC’s business, wares, and services, contrary to both the
common law and section 7(b) of the Trade-marks Act:

7.         No person shall

…

(b)        direct public attention to his wares, services or
business in such a way as to cause or be likely to cause confusion in Canada,
at the time he commenced so to direct attention to them, between his wares,
services or business and the wares, services or business of another;

[34]       
The parties agree that the test for common law and statutory passing-off
is the same.

[35]       
I respectfully adopt what my brother Sigurdson had to say about the tort
of passing-off in two decisions: British Columbia Automobile Association v.
Office and Professional Employees International Union Local 378, 2001 BCSC
156, 85 B.C.L.R. (3d) 302, and Law Society of British Columbia v. Canada
Domain Name Exchange Corporation, 2004 BCSC 1102, 243 D.L.R. (4th) 746,
aff’d 2005 BCCA 535.

[36]       
In the BCAA case, Sigurdson J. explained that the tort of passing-off
can occur in different ways:

[55]      …In National Hockey League v. Pepsi-Cola
Canada Ltd., (1992), 42 C.P.R. (3d) 390 (B.C.S.C.), affd. (1995) 59 C.P.R.
(3d) 216 (B.C.C.A.), the Court indicated that passing-off cases fall
into two broad categories. At trial, Hardinge J., whose judgment was
affirmed by the Court of Appeal, said that the first type of case is:

… those where competitors are
engaged in a common field of activity and the plaintiff has alleged that the defendant
has named, packaged or described its product or business in a manner likely to
lead the public to believe the defendant’s product or business is that of the
plaintiff.

A second type, which is perhaps a more common type of passing-off
was described to exist:

…[where] a defendant has promoted
his product or business in such a way as to create the false impression that
his product or business is in some way approved, authorized or endorsed by the
plaintiff or that there is some business connection between the defendant and
the plaintiff. By these means a defendant may hope to "cash in" on
the goodwill of the plaintiff.

[at page 401]

[37]       
In the Law Society case, Sigurdson J. set out the test for the second
type of passing-off, with which we are concerned:

[12]      The test for passing-off was described in Greystone
Capital Management Inc. v. Greystone Properties Ltd. (1999), 87 C.P.R. (3d)
43, 46 B.L.R. (2d) 45 (S.C.), where Madam Justice Stromberg-Stein referred to
an allegation of passing-off in the business association or business connection
sense (as opposed to leading the public to believe the defendant’s product or
business was that of the plaintiff).  She summarized the leading authority,
correctly in my view, this way (at 50-51):

The tort of passing-off concerns
misrepresentations by one party which damage the reputation or goodwill of another
party.  It is necessary to establish three components to succeed in a
passing-off action, either at common law or pursuant to statute.  Those
components were set out in Ciba-Geigy Canada Ltd. v. Apotex Inc. (1992),
44 C.P.R. (3d) 289 (S.C.C.):

1.         The existence of
reputation or goodwill at the relevant time.  This includes consideration of
whether the plaintiff was recognized by the trade name and whether the trade
name was distinctive within the relevant field of activity.

2.         A misrepresentation
leading the relevant public to believe there is a business association or connection
between the parties.  This includes consideration of whether the defendants’
use of the trade name is likely to deceive the relevant public.  Any misrepresentation
need not be deliberate and proof of intent is not necessary.  Evidence of
likelihood of confusion, leading to the possibility of lost business
opportunity, is relevant.  However, the establishment of actual confusion is
not required.

3.         Damage or potential damage flowing to the
plaintiff as a result of any misrepresentation due to loss of control over its
reputation is presumed.

[38]       
Quite properly, the defendant concedes the first component:  the
existence of reputation or goodwill at the relevant time.

[39]       
The second component is where the issue arises.  Would the ordinary
average automobile insurance customer (see BCAA at para.117) be led to
believe that there is a business association or connection between the
Insurance Corporation of British Columbia and ICBCadvice.com?

[40]       
I find that this is not a case where the likelihood of confusion is
immediately obvious.  It therefore differs from the Law Society case,
where the defendant had secured the domain names <lawsociety.bc.ca> and
<lsbc.org>, both of which directed visitors to websites that had nothing
to do with the Law Society.  It also differs from British Telecommunications
plc and another v. One In A Million Ltd. and others, [1998] 4 All E.R. 476
(C.A.), where the defendants made a specialty of registering domain names
comprising well-known names and trademarks without the consent of the person or
company owning the goodwill in the name or trademark.  Examples were <burgerking.co.uk>,
and <bt.org>.

[41]       
In both those cases, the likelihood of confusion was self-evident, and passing-off
was found.  So it would be in this case if the defendant had registered, for
instance, the domain name <icbc.net>.

[42]       
Instead, this case is more like the BCAA case, where Sigurdson J.
concluded that the defendant union’s website and domain names did not
constitute passing-off.   As in this case, the defendant union, which was at
loggerheads with the BCAA, had set up a website incorporating the plaintiff’s
mark, "BCAA", but also adding other words, using domain names such as
<bcaaonstrike.com> and <bcaabacktowork.com>.

[43]       
Although that case involved the use of a trade-mark, I consider that the
reasoning applies equally to the use of an official mark.  Mr. Justice
Sigurdson said this:

[73]      If someone uses a person’s trade-mark as the domain
name, such as Marks & Spencers.com or McDonalds.com, without any other
words or letters, that is likely to confuse members of the public who type in
the domain name looking for the website of Marks & Spencers or McDonalds
and then come to something else. They will think the website has some
connection with the site they were seeking.

[74]      The case at bar does not involve the use of a
trade-mark alone in the domain name, rather it deals with a website that contains
the name and trade-mark BCAA as part of a more complete description, such as in
bcaabacktowork.com.

…

[121]    I find that the current
Union website does not constitute a passing-off. I have concluded that there is
no misrepresentation that the Union site is a site of the plaintiff, or a site
that is endorsed by, affiliated with or connected to the plaintiff. I think
there is no actionable passing-off because there is no confusion or possibility
of confusion in the minds of an internet web user that the site is associated
with or the property of the BC Automobile Association.

[44]       
Like Sigurdson J., I conclude that the defendant’s current
ICBCadvice.com website, and its other domain names, do not constitute a passing-off. 
I cannot see how an average customer would be deceived into thinking that the
website is somehow associated with or approved by ICBC.  There is no evidence
of either actual confusion or likelihood of confusion, and as noted, a
likelihood of confusion is not so obvious that evidence is unnecessary.

[45]       
In this way, this case is also distinguishable from Masterpiece Inc.
v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. 387, where the
Supreme Court of Canada considered trade-mark priorities between two
corporations involved in the retirement residence industry.  One used the mark
"Masterpiece Living", while the other used the mark "Masterpiece
the Art of Living".  The context of the industry in which both parties
were active is important.  It would be akin to the defendant in this case using
the name "ICBCinsurance.com" as opposed to ICBCadvice.com.

[46]       
The plaintiff argues that evidence of a likelihood of confusion can be
found in the tendency of search engines to turn up the ICBCadvice.com website
among others in response to an internet search for "ICBC".  The behaviour
of search engines is not, in my view, evidence of anything other than the
operation of an algorithm, and search-engine marketing.  It is certainly not
evidence of confusion.  Is the public so naïve as to assume that every hit
returned to a search for "ICBC" is somehow associated with or
endorsed by the Insurance Corporation of British Columbia?  I suspect that the
Industrial and Commercial Bank of China would be rather distressed if that
proved to be so.

[47]       
As the Court of Appeal observed in Private Career Training
Institutions Agency v. Vancouver Career College (Burnaby) Inc., 2011 BCCA
69, 14 B.C.L.R. (4th) 358 at para. 35, "the consumer must be given
credit for having normal intelligence."

[48]       
In the context of British Columbia’s universal automobile insurance
scheme, I am satisfied that the average customer of normal intelligence would
not be led astray, and would have no difficulty recognizing that ICBCadvice.com
would probably relate to how to deal with ICBC in an arm’s length or even
adversarial sense, rather than in a manner endorsed by ICBC.

[49]       
I conclude that the plaintiff’s claim based upon the common law and
statutory tort of passing-off must be dismissed.

C. Is the
defendant in breach of the Competition Act?

[50]       
The plaintiff asserts that, in addition to breaching the Trade-marks
Act, the defendant has also breached section 52 of the Competition Act,
R.S.C. 1985, c. C-34, thereby giving rise to a claim under section 36:

52.(1)   No person shall, for the purpose of promoting,
directly or indirectly, the supply or use of a product or for the purpose of
promoting, directly or indirectly, any business interest, by any means
whatever, knowingly or recklessly make a representation to the public that is
false or misleading in a material respect.

…

(4)        In a prosecution for
contravention of this section, the general impression conveyed by a
representation as well as its literal meaning shall be taken into account in
determining whether or not the representation is false or misleading in a
material respect.

[51]       
In the plaintiff’s submission, conduct that constitutes the
misrepresentation component of the tort of passing-off also constitutes a false
or misleading representation under section 52 of the Competition Act.

[52]       
I have found, however, that the use by the defendant of the
website/domain name "ICBCadvice.com", and its other related usages, do
not constitute misrepresentation because they are not likely to deceive the
public as is required to establish the tort of passing-off.  By the same
reasoning, those uses do not constitute a representation to the public that is
false or misleading in a material respect, and so do not breach section 52 of
the Competition Act.

[53]       
It follows that any claim by the plaintiff pursuant to section 36 of the
Competition Act must also be dismissed.

CONCLUSION

[54]       
I have found that the plaintiff is entitled to an order restraining the
defendant from distributing to any person or organization in electronic or hard
copy form a copy of its Claim Guide using or displaying the name "ICBC
Claim Guide".  Apart from this, the plaintiff’s claims pursuant to the Trade-mark
Act, the tort of passing-off, and Competition Act, fail and
must be dismissed.

[55]       
In these circumstances, I do not find it necessary to consider the
defences raised by Stainton Ventures.  The defendant failed to give the notice
under the Constitutional Question Act, R.S.B.C. 1996, c. 68,
required to permit it to advance its defence based on the application of the
Canadian Charter of Rights and Freedoms.  The defence of acquiescence
and estoppel raised by the defendant, even if available on the facts, would not
apply to the limited relief to which I have found the plaintiff entitled.

[56]       
If there are undisclosed factors relevant to the issue of costs, the
parties may arrange for a brief further hearing.  Otherwise, as the defendant
has enjoyed substantial success, it is entitled to its costs of this action.

"GRAUER,
J."