The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Camila Gouvea Belmiro, Brazil. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 1, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is an online graphic design platform with over 30 million users in 190 countries, founded in 2012. The Complainant uses the trademark CANVA in connection with its graphic design services. The Complainant owns multiple trademarks registrations for the term CANVA, among others: CANVA International Trademark Registration No. 1204604, registered on October 1, 2013; The Respondent registered the Disputed Domain Name on January 19, 2021. The Disputed Domain Name resolves to a website which brandishes the Complainant’s CANVA logo – and visual variants thereof – and purports to provide various commercial offerings in connection with the CANVA trademark. 5. Parties’ Contentions A. Complainant The Complainant´s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name is confusingly similar to its CANVA trademark. The Disputed Domain Name incorporates the Complainant’s CANVA trademark exactly, only succeeded by the term “especialista” (which translates to ‘specialist’ in English). The Complainant further states that this addition in fact supports the probability of Internet-user confusion. Such users are likely to believe that the Disputed Domain Name refers to specialists endorsed by the Complainant. Rights or legitimate interests The Complainant alleges that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant further submits that the Respondent has not registered any trademarks for the CANVA name or the term “canvaespecialista”. The Complainant also cannot find any evidence to suggest the Respondent holds unregistered rights in the CANVA name or the term “canvaespecialista”. Moreover, the Complainant has not authorized or licensed the Respondent to use a domain name that features the CANVA trademark. The Complainant submits that the Respondent has not used, nor prepared to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant submitted evidence that the Disputed Domain Name currently resolves to a site which brandishes the Complainant’s distinctive CANVA logo and purports to provide various commercial offerings in connection with the CANVA brand. In addition, the Complainant argues that the Disputed Domain Name is used to redirect Internet users to third party websites, at least one of which is unrelated to the Complainant’s CANVA services. Furthermore, the Complainant contends that the Disputed Domain Name’s site also does not provide a disclaimer, to inform Internet users about the lack of a relationship between the Complainant and the Respondent. Finally, the Complainant submits that the Respondent is not known, nor has ever been known, by the distinctive CANVA name, nor by the term ‘canvaespecialista’. Registration and use in bad faith The Complainant submits that the Respondent both registered and is using the Disputed Domain Name in bad faith for the following reasons: The Complainant’s earliest CANVA trademark registration predates the Disputed Domain Name’s registration by almost nine years. The Complainant contends that anyone with access to the Internet can find its CANVA trademark clearly on public trademark databases. Additionally, virtually all top Google search results for the CANVA term pertain to the Complainant’s offerings. The Complainant further states that the Respondent’s use of the Disputed Domain Name evidences that the Respondent was clearly aware of the Complainant’s CANVA trademark prior to the Disputed Domain Name registration. In this sense, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CANVA trademark. The Respondent’s inclusion of the term “especialista” in the Disputed Domain Name provides further evidence of attempted deception, as this term naturally gives an impression of authenticity (as though controlled by authorized employees of the Complainant). Finally, the Complainant alleges that the Respondent’s redirection of Internet users to unconnected third-party websites is further evidence of its bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in the which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark CANVA. The Disputed Domain Name contains the Complainant’s CANVA trademark in its entirety. The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the term “especialista”. The addition of such term does not prevent a finding of confusing similarity between the Complainant’s trademark and the Disputed Domain Name. In addition, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: “(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the CANVA trademark. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services. Furthermore, the nature of the Disputed Domain Name, comprising the Complainant’s CANVA trademark and an additional term (which could be translated as “specialist”), and the Respondent’s use of the Disputed Domain Name, resolving to a website giving a false impression of association with the Complainant and lacking any disclaimer regarding the relationship between the Parties, carry a risk of implied affiliation and cannot constitute fair use as the Disputed Domain Name effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1 and 2.5.2. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant has used its trademarks long before the Disputed Domain Name was registered. In light of this, the Respondent likely had knowledge of the Complainant’s CANVA trademark when it registered the Disputed Domain Name. The fact that the website reproduces the Complainant’s trademark and logo further support this. The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has intentionally created a likelihood confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its CANVA trademark. The Respondent has not denied the Complainant’s assertions. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights. Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” In the case at hand, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s CANVA trademark, the use of the Disputed Domain Name for various commercial offerings in connection with the CANVA trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, affirm a finding of bad faith. Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and the website to which the Disputed Domain Name resolves in order to attract Internets users for its own commercial gain, as set out in paragraph 4(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, Pablo A. Palazzi
CANVA United States of America Trademark Registration No. 4316655, registered on April 9, 2013; and
CANVA Australian Trademark Registration No. 1483138, registered on September 9, 2013.
Sole Panelist
Date: June 15, 2021
Full & Egal Universal Law Academy