This month's entry focuses on how to protect your brand from Cybersquatting and Cyberpiracy. The are at least three ways a brand owner can deal with these issues. The first is by way of an action in the courts. Because of the expense of such proceedings they should be limited to the most serious cases. We will deal with the other methods in future entries.
Generally, actions brought in the courts for passing off have succeeded in enjoining this type of activity. For example, in the leading case the defendant systematically registered domain names containing the brand names of well-known British companies presumably to sell them back to the brand owners. The Court found this constituted trademark infringement under the U.K. legislation and passing off. The approach taken has been adopted in many Canadian decisions.
In Vancouver Community College v. Vancouver Career College (Burnaby) Inc., the British Colombia Court of Appeal considered an action for passing off, principally concerning keyword advertising relating to the initials VCC.
The court found that based on existing decisions in BC and the decisions of the Supreme Court of Canada confusion should be assessed when the search results are first seen not when the searcher arrives at the defendant's landing page.
There was nothing about the domain name “VCCollege.ca” that distinguished the owner of that name from the plaintiff. The letters “ollege” added to the acronym “VCC” are as equally reminiscent of the plaintiff as the defendant, and there are no words or letters that disclaimed affiliation with the appellant.
The court concluded confusion was established by proof that the defendant's domain name was equally descriptive of the plaintiff and contained the acronym long associated with it.
In Canada to succeed in such an action for trademark infringement the defendant must be actually using this disputed domain name as a trademark to carry on business.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.