The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2021.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 15, 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 with over 20 million users in 190 countries. Since its foundation in 2012, the Complainant has used the trademark CANVA in connection with its graphic design services.
The Complainant owns multiple trademark registrations for its CANVA mark, including International Registration No. 1204604, registered on October 1, 2013; United States of America Registration No. 4316655, registered on April 9, 2013; and Australian Registration No. 1483138, registered on September 9, 2013. The Complainant has received significant media recognition due to a number of acquisitions and notable partnerships. In June 2020, the Complainant was valued at approximately USD 6 billion.
The Respondent registered the disputed domain name on April 16, 2021. The disputed domain name resolves to a parked page comprising pay-per-click (“PPC”) advertising links related to the Complainant’s CANVA mark and photo printing.
On June 14, 2020, the Complainant sent the Respondent a cease-and-desist letter via email, demanding that the Respondent transfer the disputed domain name to the Complainant. The Respondent did not reply to this letter.
5. Parties’ Contentions A. ComplainantThe Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that:
- it holds a number of registered trademarks for the CANVA term, which cover multiple jurisdictions and that it is consensus view among panels, that where a complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold of having trademark rights for the purposes of standing to file a UDRP case;
- the addition of other terms to a domain name would not prevent a finding of confusing similarity;
- the terms ‘font’ and ‘combinations’ have clear connotations to the Complainant’s offerings, as an online graphic design platform (also see 12.6 and Annex 11), and thus increase the likelihood of Internet-user confusion;
- the Panel should disregard the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name, as this is a standard registration requirement.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- to the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the CANVA mark or “canvafontcombinations”;
- the Complainant cannot find any evidence to suggest the Respondent holds unregistered rights in either of these terms:
- the Respondent has not been licensed by the Complainant to use domain names that feature the CANVA trademark;
- the Respondent is not known, nor has ever been known, by the distinctive CANVA mark, nor by the term “canvafontcombinations”;
- the Respondent has no connection or affiliation with the Complainant and has not received license or consent to use the CANVA mark in any way;
- the Complainant’s CANVA mark is globally distinctive and the Respondent’s use of the disputed domain name, redirecting Internet users to various unrelated or competing sites via PPC links, does not amount to either legitimate noncommercial or fair use.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the Complainant’s earliest CANVA trademark registration predates the disputed domain name’s registration by more than nine years and has accrued substantial goodwill and international recognition;
- all top Google search results for the CANVA term pertain to the Complainant’s offerings;
- considering the nature of the disputed domain name’s composition the Respondent was unequivocally aware of the internationally renowned CANVA mark at the time the disputed domain name was registered;
- the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CANVA mark;
- the Respondent’s choice of terms in the disputed domain name (i.e., in addition to the CANVA mark) reflect the latter’s attempt to derive commercial gain by capitalising on Internet-user confusion;
- the disputed domain name’s string of terms, when read together, give Internet users the false impression that it should resolve to a site endorsed or controlled by the Complainant;
- the Respondent has therefore clearly chosen and proceeded to use the disputed domain name under the pretext of deriving commercial gain by creating confusion with the Complainant’s CANVA mark;
- the Respondent has intentionally attempted to attract and deceive Internet users for commercial gain by hosting a site with PPC links to various other sites and services, some of which compete with the Complainant’s offerings;
- the Respondent’s use of the disputed domain name, redirecting Internet users through the presentation of such PPC links, provides clear evidence of its bad faith conduct within the meaning of paragraph 4(b)(iv).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(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.
The Complainant has demonstrated that it owns multiple trademark registrations for the mark CANVA prior to the registration of the disputed domain name on April 16, 2021.
It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name contains the CANVA trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark.” (See, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”)).
Further, in this case the disputed domain name only differs from the Complainant’s trademark CANVA by the addition of the terms “font” and “combinations” which have a clear connotation to the Complainant’s offerings as an online graphic design platform. The addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of WIPO Overview 3.0).
Finally, it is well accepted under the UDRP case law that the specific gTLD designation such as “.com”, “.net”, “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (WIPO Overview 3.0 section 1.11).
For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s CANVA Trademark in which the Complainant has exclusive rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4 (c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or 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 [the Respondent] (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 [the Respondent] 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.”
The Complainant has asserted and presented evidence that the disputed domain name resolves to a parked page comprising PPC advertising links and that these links redirect Internet users to various sites and services, some of which compete with the Complainant’s offerings.
These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.
From the record in this case, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Respondent has used the disputed domain name to resolve to a PPC advertising webpage featuring various links that redirects Internet users to unrelated or competing websites.
Regardless of whether the Respondent consciously included those links or whether an algorithm over which the Respondent had limited or no control generated them, the advertisements undoubtedly take advantage of the Complainant’s trademarks. (Boris Johnson v. Belize Domain Whois Service Lt,WIPO Case No. D2010-1954). The Panel therefore concludes that such use can convey no rights or legitimate interests in the disputed domain name and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i. circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
ii. the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
iii. the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, 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.
The Complainant holds multiple trademark registrations for the CANVA Mark in various countries that predate the registration of the disputed domain name.
Given that the Complainant’s CANVA mark was widely known at the time the Respondent registered the disputed domain name and that the term “canva” has no ordinary meaning that might explain why the Respondent registered the domain in combination with descriptive terms that have clear connotations to the Complainant’s offerings as an online graphic design platform, it is inconceivable that the Respondent coincidentally registered the disputed domain name without any knowledge of the Complainant and its CANVA Mark.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Based on the record in this proceeding it is also undisputed that the disputed domain name redirects Internet users to a PPC parking page featuring links to websites some of which compete with the Complainant’s offerings.
The purpose of this PPC parking website clearly was to attract Internet users to the site, for profit, based on their confusing the Respondent’s domain name and/or website with the Complainant. Once on the Respondent’s page, some users likely click on PPC links, which presumably result in click-through fees and thus in a commercial benefit on the Respondent.
The Panel therefore infers that the Respondent by using the disputed domain name in this manner, has intentionally created a likelihood of confusion with the Complainant’s trademark for the Respondent’s financial gain and that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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
Torsten Bettinger
Sole Panelist
Date: September 30, 2021