… In this case, the defendants say that there cannot possibly be any confusion in the public’s mind about the organization Members for Democracy and its independence from the plaintiff union. They quite rightly claim that as soon as the homepage of the Web site is opened, it is obvious to even the most casual observer that the Web site is not union sponsored, nor union affiliated, but rather that it is a Web site promoting discussion about union reform, not limited to the plaintiff union but to labour unions generally. … The question then is whether the domain name of the Web site alone, namely ufcw.net, and the use of that name can constitute passing off…. In this case, I am satisfied that the defendants' use of UFCW, without more, in its domain name does amount to a misrepresentation likely to cause at least initial confusion as to an association or affiliation between the Web site and the plaintiff. [emphasis added]Pandi v FieldofwebsCom Ltd,  OJ No 2739 (S.C.J.) In Pandi v FieldofwebsCom Ltd,  OJ No 2739, the defendants sold pyjamas online in direct competition with the plaintiff. The defendants had embedded in meta tags on their website the plaintiff’s trademark “Jumpin Jammerz” but had ceased doing so prior to the hearing of the plaintiff’s lawsuit for passing off, among other things. The court stated that it likely would have granted an injunction restraining the defendants from using “Jumpin Jammerz” in meta tags on their website if they hadn’t already ceased doing so:
… Meta tags associated with a website are capable of bringing members of the internet public to a site who may not have intended to go there… In the physical world, this might be analogized to misleadingly diverting traffic from one trader's door to that of another. The analogy is necessarily imperfect in that the product of search engines is merely a list, thus leaving the internet traveller with the choice as to which sites on the list to visit and in what sequence, but in my view, the practice of using another trader's domain name, trade name, trade mark or logo as a meta tag for a website selling competing wares is objectionable unless the name or mark itself is merely descriptive of the wares sold… Had it been necessary, I would have made an order restraining the use of the phrase “Jumpin Jammerz” as a meta tag in association with FOW’s website in these circumstances given that the phrase is not descriptive of the wares and an arguable case could be made that its use as a meta tag was for the purpose of diverting or luring members of the public to a site that was not in fact connected with the business known as Jumpin Jammerz at all. (paras. 36 – 41)Dentec Safety Specialists Inc. v. Degil Safety Products Inc., 2012 ONSC 4721 In Dentec Safety Specialists Inc. v. Degil Safety Products Inc., 2012 ONSC 4721, the plaintiff and defendant were direct competitors, selling industrial safety products. The plaintiff operated a website at www.dentecsafety.com. The defendant registered the domain name <dentecsafety.ca> (i.e. the plaintiff’s domain name with a .ca instead of a .com) and set it up so that internet users who typed it into a browser would be directed to the defendant’s website. While this case would likely have been decided the same way on the basis of traditional passing off, Justice Campbell took the opportunity to fashion a unique set of principles to consider in the domain name context. One of the principles he expressed was that that passing off in the domain name context can arise solely from initial interest confusion. Insurance Corp of British Columbia v Stainton Ventures Ltd, 2012 BCSC 608 and 2014 BCCA 296 In Insurance Corp of British Columbia v Stainton Ventures Ltd, 2012 BCSC 608 and 2014 BCCA 296, the defendant operated a website located at www.icbcadvice.com which offered advice and resources for dealing with the Insurance Corp of British Columbia (ICBC). At trial, Justice Grauer dismissed the plaintiff’s allegations that this, alone, constituted passing off. Referring to Justice Sigurdson’s decision in British Columbia Automobile Assn. v. O.P.E.I.U. Local 378, 2001 BCSC 156, he noted that adding the word “advice” to the plaintiff’s trademark in the domain name would make it apparent that the domain name pointed to a website for dealing with the ICBC at arms-length or in adversarial manner. Had the domain name been <icbc.net> alone, however, Justice Grauer said that passing off would have been established, presumably on the basis of initial interest confusion. The B.C. Court of Appeal upheld this decision in 2014. Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19 Given all of the cases above relating to initial interest confusion, Justice Manson’s comment in Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19, that initial interest confusion has not “gained a foothold in Canada” is surprising – particularly since he actually cited the Jumpin Jammerz and ICBC cases in his reasons. The defendant in this case did not use the plaintiff’s trademarks in any visible portion of its website (e.g. in domain names). While it did use the plaintiff’s trademarks extensively in meta tags embedded in its website, Justice Manson found that this was not sufficient to establish passing off because a person would not be confused as to the source of the defendant’s website or its affiliation with the plaintiff by the time they got there. In so holding, Justice Manson categorically rejected initial interest confusion as a basis for passing off. To that extent, this decision from the Federal Court is a departure from where the case law summarized above appeared to be headed, especially since the Jumpin Jammerz case. But don’t count passing off by initial interest confusion out yet. The fact that Justice Manson did not acknowledge the history of the concept in Canada, as set out above, should make any judge reluctant to be bound by his decision, particularly outside of the Federal Court. And, as of the date of writing this, the plaintiff is appealing the decision. So stay tuned!