Search And Ye May Find Something Else: Use Of Competitors' Names In Keyword Advertising And Domains

Introduction

In Vancouver Community College v Vancouver Career College (Burnaby) 2017 BCCA 41, the British Columbia Court of Appeal found that Vancouver Community College ("VCC") had established the tort of passing off against Vancouver Career College ("Career College") for using "VCC" and "VCCollege" as part of Career College's internet presence, overturning the trial judge on each component of passing off and awarding a permanent injunction to restrain Career College from using "VCC" or "VCCollege" to represent itself on the internet, including the domain name "VCCollege.ca" The court also considered for the first time whether or not the use of competitors' marks in keyword advertising constituted passing off.

Background

VCC was appealing its initially unsuccessful attempt to have Career College cease use of VCC's recognizable initials. VCC had claimed passing off as a result of the respondent Career College's use of the domain name VCCollege.ca, and breach of the official marks of VCC, but also contended that Career College's practice of bidding on the keywords "VCC" and "Vancouver Community College" was confusing enough to satisfy the second component of passing off, and further breached its official mark. The trial judge found against VCC on each component of the tort of passing off, and dismissed the claim for breach of VCC's official marks.

The Tort of Passing Off

To establish the tort of passing off, a party must prove goodwill in the trade name at stake, and that a misrepresentation was made by the defendant that is likely to confuse the public by presenting or suggesting a connection between the plaintiff and defendant. Damage to the plaintiff is presumed due to the plaintiff's loss of control over their reputation resulting from the misrepresentation.

In this case, goodwill was easily established by showing that a sufficient portion of the marketplace knew that "VCC" indicated Vancouver Community College. The second component is likely confusion of the public through a misrepresentation. The trial judge found that the first impression of the trade name was formed only after the consumer had clicked through to the defendant's website, so any confusion in the domain name "VCCollege.ca" was irrelevant. The Court of Appeal overturned that to find that "VCCollege" was equally as descriptive of VCC as of Career College and contains the acronym "VCC", so the domain name "VCCollege.ca" was a misrepresentation likely to cause confusion...