The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 30, 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 July 6, 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.
The Center appointed Kateryna Oliinyk as the sole panelist in this matter on September 2, 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 BackgroundThe Complainant is an online graphic design platform founded in 2012 by Melanie Perkins, Cliff Obrecht and Cameron Adams. The Complainant has been valued at $6 billion as of June 2020, 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 offers its services, as a basic package, for free. The Complainant offers a paid version named “Canva Pro”, which has more features and design capabilities. The Canva app is also available on iPhone, iPad, and Android devices.
The Complainant offers a “design school” which provides tutorials, courses and events. The “design school” helps businesses and graphic designers perfect their work, with courses such as “Social media mastery”, “Graphic Design Basics” and “Canva for the classroom” offered. The Complainant also maintains blogs on design, marketing, branding and photography.
The Complainant holds several registered trademarks for the trademark CANVA (the “CANVA trademark”), including the following:
- United States of America Registration No. 4316655 registered on April 9, 2013, in Class 42;
- Australian Registration No. 1483138 registered on September 9, 2013, in Class 9; and
- International Registration No. 1204604 registered on October 1, 2013 in Class 9.
The Complainant is cited in various publications and is prominent in social networks with large number of followers and subscribers.
The disputed domain name
On May 4, 2021, the Complainant sent the cease and desist letter to the Respondent, which remained unanswered.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to the Complainant’s CANVA trademark. The Complainant contends that the only element of the disputed domain name that differs from the Complainant’s CANVA trademark is the introduction of the additional letter “v” to the disputed domain name, which is not sufficient to prevent a finding of confusing similarity.
The Complainant further contends that the Respondent lacks rights and legitimate interests in the disputed domain name because the Complainant never granted the Respondent a license or other authorization to use its CANVA trademark, nor has the Respondent any relationship with the Complainant that would entitle the Respondent to use the Complainant’s trademark. Furthermore, to the best of the Complainant’s knowledge, the Respondent has not been commonly known by, or associated with, the disputed domain name.
The Complainant submits that the disputed domain name is used by the Respondent to make unauthorized redirections to the Complainant’s own website. The Complainant, therefore, submits the Respondent has registered the disputed domain name with the intention of creating a false impression of association with the Complainant, that cannot confer any rights or legitimate interests in the disputed domain name.
The Complainant further contends that the disputed domain name has been registered and is being used in bad faith.
The Complainant alleges that its trademark registrations predate the creation date of the disputed domain name. Substantial goodwill has accrued since the Complainant’s establishment in 2012, and the CANVA trademark is associated with online graphic design tools.
The Complainant further submits that anyone who has access to the Internet can find the Complainant’s trademarks on public trademark databases. Results on popular search engines such as Google for the term “canva” list the Complainant’s brand and services as the first result.
The Respondent has used the disputed domain name solely to target the Complainant's CANVA trademark through redirection to the Complainant’s own website. Therefore, the Complainant alleges that the Respondent has the constructive knowledge of the Complainant’s business and CANVA trademark.
The Complainant further alleges that the Respondent has not replied to cease and desist letters sent on Complainant’s behalf, which constitutes further evidence that the Respondent is knowingly acting in bad faith.
The Complainant further alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s CANVA trademark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe first element of paragraph 4(a) of the Policy requires a complainant to establish first, that it has rights in a trademark, and secondly, that the disputed domain name is identical or confusingly similar to that trademark.
Where the Complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing. See section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel has established that the Complainant holds several national and international trademark registrations in the CANVA trademark. The Panel finds that the Complainant has rights in the CANVA trademark acquired through national and international registrations, and that the trademark is in active use.
Under section 1.9. of the WIPO Overview 3.0 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
The disputed domain name
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 under the first element of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the CANVA trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its CANVA trademark.
Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name.
Furthermore, the use of the disputed domain name, which redirects Internet users to the Complainant’s own website, does not constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
In the Panel’s view, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the CANVA trademark.
Previous UDRP panels have held that the use of a domain name to redirect Internet users to the Complainant’s own website cannot confer any rights or legitimate interests in the disputed domain name. See section 2.5.3. of the WIPO Overview 3.0. See also, e.g., GameStop, Inc. v. Above.com Domain Privacy / Protection Domain,WIPO Case No. D2018-1243, MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231.
As the Panel has established that the Respondent was not authorised to use the Complainant's trademark, such conduct is inherently misleading and cannot support a claim to right or legitimate interests to the disputed domain name.
Insofar as the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests to the disputed domain name (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261), this shifts the burden of production to the Respondent to show evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, the Respondent’s attempts to confuse Internet users and trade off the goodwill of the CANVA trademark, the Panel therefore holds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThere are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”.
According to section 3.1.4 of the WIPO Overview 3.0, panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.
Additional bad faith consideration factors include the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term). See section 3.2.1. of the WIPO Overview 3.0.
Thus, bad faith registration can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which they had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722.
Based on the evidence submitted by the Complainant, the Panel shares the view of previous UDRP panels and finds that the Complainant’s CANVA trademark has gained a high degree of awareness among the public and has a global outreach. The Complainant has acquired a significant reputation and goodwill in the CANVA trademark.
The Panel further establishes that the disputed domain name was registered years after the Complainant’s CANVA trademark was registered.
The disputed domain name redirects Internet users to the Complainant’s own website.
Based on these facts it is implausible to believe that the Respondent was not aware of the Complainant’s CANVA trademark when it registered the disputed domain name. The Panel further establishes that the Respondent targeted the Complainant and its CANVA mark when it registered the disputed domain name.
Section 3.1.4. of the WIPO Overview states that bad faith is established under the circumstances of redirecting a domain name to the complaint’s website insofar as the respondent retains control over the redirection. See also, e.g., FXCM Global Services LLC v. WhoisGuard Protected, WhoisGuard Inc. / Jenny Sohia,WIPO Case No. D2018-1111.
Such use of the disputed domain name would likely mislead Internet users into believing the disputed domain name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.
Thus, the Panel establishes that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Additionally, the disputed domain name consists of an intentional misspelling of the Complainant’s trademark, which is indicative of “typosquatting”. Previous UDRP panels have found that typosquatting is inherently parasitic and of itself evidence of bad faith. See, e.g., National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. Jon Zuccarini,WIPO Case No. D2002-1011.
The Respondent also failed to respond to the Complainant’s cease-and-desist letter, and did not provide any good reason to justify this, which confirms its bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). Furthermore, the failure of the Respondent to provide the Response to the Complaint, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Section 3.1.2. of the WIPO Overview 3.0 further states that: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.
This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.
A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners…”
As the Respondent has been already involved in various UDRP proceedings, as it was evidenced by the Complaint, the Panel accepts the inference of cybersquatting set forth in the Complaint.
Considering the above, and the fact that the Respondent has listed the disputed domain name for sale on domain aftermarket Sedo.com, for a minimum offer price of USD 500 as evidenced in Annex 19 of the Complaint, a price that likely exceeds what would reasonably be expected to be within the Respondent’s out-of-pocket costs related to the disputed domain name, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Kateryna Oliinyk
Sole Panelist
Date: September 16, 2021