The Plaintiff has three registered trademarks: “redtag.ca”, “redtag.ca vacations”, and “Shop. Compare. Payless!! Guaranteed”. The Defendant company was incorporated in 2008, and went online in 2009. The Court noted that the owner of the Plaintiff bought the domain name “411travelbuys.ca” to sell to the Defendant for a profit. The Defendants’ website contained the terms “red tag vacations” and “shop, compare & payless” in the metatags, which was not visible to customers visiting the 411 Travel Buys website. The Plaintiff contacted the Defendant in March 2009, advised of the allegedly infringing content and the content was removed.
The Plaintiff brought the within action for copyright infringement, trademark infringement, passing off and depreciation of goodwill. The Defendant filed a defence and counterclaim for passing off against the Plaintiff.
After reviewing the evidence of all the witnesses, the Court noted that “there is no dispute that in this case, the Defendant 411 Travel Buys copied the Plaintiff’s metatags”. However, the Court ultimately found “[w]hile in some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole, the substance of the metatags asserted by the Plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada.” The Court found that there was little evidence of a sufficient degree of skill and judgment in creating the metatags. The Court also noted that the evidence established that it was innocent infringement if any infringement had occurred.
In terms of trademarks and trade names, the Court found that goodwill did exist in two of the three trademarks. The Court also found that the use of the trademarks in the metatags of the Defendants did result in redirected traffic. However, the Court found “use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion, because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for.” The Court found no passing off, no trademark infringement and no depreciation of goodwill. The action was dismissed.