The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Linda Ward, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2021. On June 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 24, 2021. The Center verified that the Complaint together with the amended 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 June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on August 3, 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 in this administrative proceeding, Canva Pty Ltd., is an online graphic design platform founded in 2012 by Melanie Perkins, Cliff Obrecht and Cameron Adams. Users of the Complainant’s services have thousands of images and templates to choose from when creating graphic designs. The Complainant’s services have achieved significant reputation and acclaim. The Complainant has been valued at $ 6 billion as of June 2020, and currently has some 30 million active users per month with customers in 190 countries. The Complainant offers services from its main site, “www.canva.com”. The Complainant has proven to have rights in the CANVA trademarks, which enjoy protection through several registrations. The Complainant has rights, inter alia, in the following trademarks: - Australian Trademark Registration No. 1483138 for CANVA, registered on September 9, 2013 - United States Trademark No. 4316655 for CANVA, registered on April 9, 2013. - International Trademark No. 1204604 for CANVA, registered on October 1, 2013. - United States Trademark No. 6114099 for CANVA (device), registered on July 28, 2020. Furthermore, the Complainant has also established a strong social media presence and uses the CANVA trademark to promote its services under this name, in particular on Facebook, Twitter, and Instagram. The disputed domain name previously resolved to a site that displayed the Complainant’s logo and purported to provide “Social & Print Templates For Real Estate Agents”. Text at the bottom of the Respondent’s site indicated that “The Canva © name and logo are all copyrighted material of Canva.com” and that “CanvaForAgents.com is a third-party service, working with, but not affiliated to Canva ©” (i.e., the Complainant). Currently the disputed domain name resolves to a mostly blank “Domain Not Claimed” page. The disputed domain name was registered on November 20, 2020. 5. Parties’ Contentions A. Complainant The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 The Complainant has established rights in the CANVA trademarks. The disputed domain name contains the Complainant’s renowned trademark followed by the terms “for” and “agents”. Section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Therefore, the Panel finds the disputed domain name to be confusingly similar to the CANVA trademark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “Canva for agents” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Finally, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and that it has been used in bad faith. Indeed, the Complainant gives several sound bases for its contention that the disputed domain name was registered and has been used in bad faith. The Panel finds that the Respondent was likely aware of the CANVA trademark and of the existence of the Complainant and its activity. In fact, the website that was previously linked to the disputed domain name displayed the Complainant’s logo and purported to provide “Social & Print Templates For Real Estate Agents”, and in addition to that, at the bottom of its pages text was displayed stating that “The Canva © name and logo are all copyrighted material of Canva.com” and that “CanvaForAgents.com is a third-party service, working with, but not affiliated to Canva ©” (i.e., the Complainant). This Panel believes that, on the balance of probabilities, the above shows that the choice of the disputed domain name cannot be a coincidence, and thus indicates the Respondent’s knowledge of the Complainant’s trademark and activity when registering the disputed domain name. The Respondent’s website also promoted templates purportedly customized for real estate agents, specifying that “these templates are not provided within the Canva.com platform but must be accessed through this exclusive program” (i.e., through the Respondent’s program). Moreover, regarding the disclaimer at the bottom of the website at the disputed domain name, section 3.7 of the WIPO Overview 3.0 states: “[ ] where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith.” In the circumstances of this case, the Panel considers the Respondent’s use of a disclaimer as an admission by the Respondent that users may be confused. All the above shows that the Respondent has attempted to commercially capitalize on the confusion generated and that it has used the disputed domain name to obtain commercial gain from confused Internet users. The Panel further notes that the Respondent did not reply to the Complainant’s cease and desist letter and subsequent reminder, and this constitutes further inference that it knowingly acted in bad faith. It is relevant to note that, if the Respondent did have legitimate purposes in registering and using the disputed domain name, it could have responded to the allegations made by the Complainant in the cease and desist letter and in this proceeding, but it chose not to do so. Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. While the use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used in the present case is deemed to contribute to a finding of bad faith. Moreover, the Panel also notes that currently the disputed domain name resolves to a mostly blank page. Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. 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 Fabrizio Bedarida
Sole Panelist
Date: August 17, 2021
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