The British Columbia Court of Appeal has recently affirmed a lower court finding that bidding on Google Adwords consisting of the names or trademarks of others does not, by itself, constitute passing off. However, incorporating such names or marks into a domain name can result in liability, even if the website located at the domain is not confusing.
The appellant Vancouver Community College is a public post-secondary educational institution that has used its present name and the acronym VCC since 1974. The respondent Vancouver Career College is a privately operated educational institution that has operated under its name since 1997. In 2009 the respondent adopted the trademark VCCollege and the domain name VCCollege.ca. The respondent also bid on several Google Adwords, including VCC and the appellant’s name, “Vancouver Community College”. The appellant alleged the respondent’s trademark and domain name encompass its well-known acronym in its entirety, and that its activities constitute passing off, in violation of the Trade-marks Act.
At the trial of this action the appellant was unsuccessful, but the Court of Appeal rejected the trial court’s approach to the case for the most part. In particular, the Court rejected the idea, adopted by the trial court, that any consumer confusion resulting from the seeing the domain name VCCollege.ca would be resolved once the consumer viewed the respondent’s website located at the domain name, which did not resemble the appellant’s site. The Court found that the relevant time for assessing confusion is when the domain name is first viewed on a list of search results, and that consumers would likely VCCollege.ca for the domain of the appellants. The Court agreed, however, with the trial court’s finding that bidding on Google Adwords, by itself, did not constitute passing off.