Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
Respondent is Varinder Rajoria, KnotSync Ltd, United Kingdom, represented by RAKESH TIWARI, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 10, 2021, the Center received an informal communication from Respondent.
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 Respondent of the Complaint, and the proceedings commenced on August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021.
On August 30, 2021, Respondent requested an extension of response to file its response. Respondent received the automatic four-calendar day extension for response until September 4, 2021, under paragraph 5(b) of the Rules by the Center on August 31, 2021. Respondent did not file a formal response and the Center informed the Parties on September 6, 2021 of the Commencement of Panel Appointment Process.
On September 6, 2021, Respondent requested a further extension to file its response and Complainant opposed Respondent’s request for a further extension. On September 8, 2021, Respondent filed a Response and a request with the Center to settle the matter amicably, offering to transfer the Domain Name to Complainant “subject to consideration of 150,000.00 USD as Respondent has spent, incurred and invested sufficient amount of money, labour, skill, time, energy and expertise in establishing and protecting brand and domain name printcanva.com.” In response to the Center’s communication to the parties, Complainant on September 9, 2021, stated “[w]e have considered the Respondent’s request to settle this proceeding; in this regard we find that the consideration requested by the Respondent is unreasonable” and Complainant requested that the case proceed. On September 10, 2021, Respondent again requested an amicable agreement between the Parties. Complainant replied that it would not seek suspension of the proceeding unless Respondent agrees to transfer the Domain Name for “no consideration”. Respondent did not reply to Complainant’s communication.
On September 15, 2021, the Center acknowledged receipt of Complainant’s communication and started the panel appointment process.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 17, 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 BackgroundComplainant is an online graphic design platform founded in 2012. Users of Complainant’s services have thousands of images and templates to choose from when creating graphic designs. The online platform uses a drag-and-drop methodology. As a result, Complainant’s services have achieved significant reputation and Complainant has been valued at USD 6 billion as of June 2020, and currently has some 30 million active users per month with customers in 190 countries. Complainant offers services from its main site, “www.canva.com”, which received an average of more than 230 million visits per month between January and June 2021.
Complainant offers its services as a basic package for free. Complainant also offers a paid version named “Canva Pro”, which has more features and design capabilities. Global organizations such as Anytime Fitness, Huffington Post, Greenpeace, and Duke University, among hundreds of others, use Complainant’s services.
The CANVA brand is well known around the world. Complainant’s services are offered exclusively online, which make them inherently global. Within its first year, Complainant had 750,000 users, and had raised USD 3 million in seed funding. Through its achievements, the CANVA mark has also received significant exposure within Australia, where the company was founded. The international commercial accomplishments of Complainant led to it being renowned as an Australian success story, covered in many Australian news sites.
Furthermore, Complainant launched its app for the iPad, which increased access to CANVA services. Complainant’s app is now available on mobile phone devices. Additionally, Complainant’s business has grown through acquisitions of the companies Zeetings, Pexels, and Pixabay. Complainant also 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. Complainant also maintains blogs on design, marketing, branding, and photography. Within the field of graphic design, the CANVA mark is frequently featured in third-party lists collating the best online graphic design tools. The services offered under the CANVA online tool relate to a variety of uses – online users can create leaflets, social media posts, and even website designs. Complainant offers many website templates to its users, featuring modern site designs. Users can publish their designs as interactive websites.
Complainant launched printing service under the brand CANVA PRINT to European users in 2017. Complainant’s “Canva Print” service operates from “www.canva.com/print”, and enables customers to design and order (among many other varieties) business cards, posters, invitations, mugs, and t-shirts.
Complainant holds a number of registered trademarks for the CANVA and CANVA PRINT marks:
Trademark
Origin
Regis. No.
Regis. Date
Classes
CANVA
Australia
1483138
29/03/2012
9
CANVA
United States of America
4316655
09/04/2013
42
CANVA
International
1204604
01/10/2013
9
CANVA PRINT
Australia
2004675
22/04/2019
40
CANVA
Brazil
914660462
30/04/2019
9
CANVA PRINT
United
Kingdom
UK00003396035
19/07/2019
40
CANVA PRINT
w/ logo
European Union
018042224
20/09/2019
40
CANVA PRINT
w/ logo
United States of America
6114099
28/07/2020
9, 42
Complainant uses the CANVA term as part of its brand logo, which is also registered as a trademark across various jurisdictions:
Complainant has established a strong social media presence and uses the CANVA mark to promote its services under this name, in particular on:
- Facebook: approximately 1.5 million likes
- Instagram: approximately 760 thousand followers
- Twitter: approximately 170 thousand followers
- Pinterest: approximately 160 thousand followers
Respondent registered the Domain Name on December 17, 2020, and it resolves to Respondent’s website, which purports to offer a pet portrait and related accessories printing service.
5. Parties’ Contentions A. Complainant(i) Identical of confusingly similar
Complainant states that the consensus view among UDRP panels, in relation to the first element, is 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 purposes of standing to file a UDRP case. Complainant holds a number of registered trademarks for the CANVA and CANVA PRINT marks, which cover multiple jurisdictions. Complainant also relies on the goodwill and recognition that has been attained under the CANVA and CANVA PRINT brands, which have become distinctive identifiers of its offerings.
Complainant submits that it satisfies the identity/confusing similarity requirement of the first element. The Domain Name incorporates Complainant’s CANVA mark clearly and exactly, and is only preceded by the generic term “print”. Panels have established that the addition of other terms to a domain name will not prevent a finding of confusing similarity.
Complainant further states that the Domain Name’s composition amounts to an exact reversal of the terms in its CANVA PRINT mark. Complainant states that prior UDRP panels have found other domain names in which a trademark’s terms have been reversed to not preclude a finding of confusing similarity under this element. Complainant contends it is likely that Internet users aware of Complainant’s printing offering will search for such through either arrangement of Complainant’s CANVA PRINT mark.
Complainant requests that the Panel disregard the generic Top-Level Domain (“gTLD”) “.com” in the Domain Name, as this is a standard registration requirement. Given the above, Complainant requests that the Panel consider the Domain Name confusingly similar to Complainant’s CANVA and CANVA PRINT marks for the purposes of satisfying paragraph 4(a)(i) of the Policy.
(ii) Rights or legitimate interests
Complainant submits that Respondent lacks a right or legitimate interest in the Domain Name. Complainant states that to the best of Complainant’s knowledge, Respondent has not registered any trademarks for the CANVA or CANVA PRINT marks, or “printcanva”. Complainant also cannot find evidence to suggest Respondent has established unregistered rights in any of these terms. Moreover, Respondent has not been licensed by Complainant to use domain names that feature the CANVA or CANVA PRINT marks.
The Domain Name currently resolves to a site titled “Print Canva”, which purports to offer a pet portrait and related accessories printing service. This site encourages Internet users to register their personal details (e.g., username, email and password), supposedly for the purposes of creating an account and conducting purchases. In the case that Respondent is actually offering goods or services through the Domain Name, such use would not constitute a bona fide offering within the meaning of paragraph 4(c)(i) of the Policy. The terms “printcanva” or “print canva” have no meaning relating to the provision of pet portraits, mugs, and t-shirts, while they do, on the contrary, have direct connotations to Complainant’s pre-existing and globally distinctive CANVA mark and offerings. Such terms compete with Complainant’s printing service under the CANVA PRINT mark and cannot amount to a bona fide offering.
Complainant further submits that, to the best of its knowledge, there is little to no evidence that Respondent is actually offering any of the goods or services it purports to sell through the Domain Name’s site. The following findings have been proffered by Complainant in this regard:
- Complainant has submitted evidence that Respondent is engaged in the provision of web design and development services (see “https://knotsync.com”). Complainant asserts that there is no clear evidence that Respondent processes or manufactures printed pet portrait orders as described under the Domain Name’s site.
- Complainant notes that third party reviews regarding Respondent are also conflicting, and likely fake. For example, a listing on “www.bark.com” states that Respondent has been in business for 15 years (despite the recent company incorporation date), and multiple customer reviews appear to be copied/contrived – with at least one corresponding to a different entity altogether.
- Reviews listed on the “Print Canva” website do not appear to be legitimate. All are unnamed and provide a five-star rating.
- Respondent’s sole company director shares this role with 4 other companies listed on the United Kingdom’s Companies House. These companies all have varying business sectors, and each list the same registered office address (which appears to be a residential home). Complainant submits it is highly unlikely that Respondent could be genuinely engaged in all of these contrasting business sectors.
In summary, Complainant submits that there is little to no evidence that Respondent is, or has ever, engaged in a commercial practice of offering a pet portraits and related accessories printing service, which the Domain Name’s site claims to provide. To the best of Complainant’s knowledge, Respondent is a web developer and its registration of the Domain Name is not underpinned by a legitimate offering of goods or services. The above findings make it clear to Complainant that Respondent is not using the Domain Name to make a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
Complainant contends that Respondent is not known, nor has ever been known, by the distinctive CANVA or CANVA PRINT marks, nor by the term “printcanva”. As emphasized above, Respondent has no connection or affiliation with Complainant and has not received license or consent to use the CANVA or CANVA PRINT marks in any way. Further, past UDRP decisions have established that the mere ownership of a domain name does not confer rights or legitimate interests on a respondent. Complainant further submits that Respondent’s registration of the United Kingdom company, Printcanva Ltd, does not confer it with rights or legitimate interests. Complainant found evidence that Respondent had actual knowledge of its CANVA brand and offerings through a series of Instagram posts from Respondent’s account, which predate Printcanva Ltd’s registration. These posts from January, April, and May of this year reference Complainant’s offerings (e.g., as a recommended graphic design tool). Respondent’s subsequent registration of Printcanva Ltd was therefore made in complete knowledge of Complainant, and reflects an attempt to bolster its Domain Name registration, particularly as it was made months after the Domain Name was registered. Given the above, Complainant contends it is clear that “Printcanva” is a name individuals would confuse with Complainant’s CANVA mark.
Complainant further contends that registration of a company name is not sufficient for purposes of the Policy to establish that Respondent is commonly known by such name, if that name had been chosen because of its association with Complainant. Under the circumstances of this case, noting the fame of Complainant’s mark, Complainant urges it is more likely that Respondent’s corporate registration was made with Complainant in mind.
Complainant states contends that Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the CANVA or CANVA PRINT marks. Respondent is purporting to provide a commercial service under Complainant’s globally distinctive CANVA mark, and in a fashion likely to confuse Internet users familiar with Complainant’s established CANVA PRINT offerings. It is clear that the advertisement of a service confusingly similar to that of Complainant neither constitutes legitimate noncommercial nor fair use within the meaning of paragraph 4(c)(iii) of the Policy.
(iii) Registered and used in bad faith
Complainant contends that Respondent both registered and is using the Domain Name in bad faith. Complainant’s earliest CANVA trademark registration predates the Domain Name’s registration by more than 8 years (and CANVA PRINT mark by more than a year). Archived screenshots of the URL used to host and advertise Complainant’s CANVA PRINT offering show that this service has been offered to Internet users since September 2017 – more than 3 years prior to the Domain Name’s registration. Complainant asserts it has accrued substantial goodwill and international recognition in relation to its offerings under the CANVA and CANVA PRINT marks. Complainant notes that anyone with access to the Internet can find these marks on public trademark databases. Additionally, all top Google search results for the CANVA and CANVA PRINT terms pertain to Complainant’s offerings. It is therefore clear that the simplest degree of due diligence (i.e., a simple Google search) would have revealed to Respondent Complainant’s rights in the CANVA and CANVA PRINT marks.
Given the above, and considering the nature of the Domain Name’s composition (i.e., involving the reversal of the words in Complainant’s CANVA PRINT mark), Complainant submits that Respondent knew of Complainant’s internationally renowned CANVA mark and CANVA PRINT offerings at the time the Domain Name was registered.
Complainant further states that it sent a cease and desist letter to Respondent on June 15, 2021, and a follow-up notice on June 24, 2021. Respondent did not reply to either communication, which Complainant contends may constitute further evidence that it knowingly acted in bad faith. Respondent, therefore, had the opportunity to explain its registration of the Domain Name, but chose not to do so.
Having established bad faith registration, Complainant asserts that Respondent also used the Domain Name in bad faith prior to notice of the Complaint. Complainant submits that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s CANVA and CANVA PRINT marks. Complainant states that UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Complainant states that this presumption exists here, as the Domain Name’s second-level clearly comprises the globally distinctive CANVA mark, and further constitutes a reversal of the CANVA PRINT mark’s words.
Complainant asserts there is no doubt Respondent, as evidenced by its earlier Instagram posts, was aware of Complainant’s CANVA offerings prior to Complainant’s cease and desist correspondence. Internet users attempting to reach Complainant’s offerings through the Domain Name’s confusingly similar arrangement of the CANVA PRINT mark are directed to a site that features the CANVA mark and purports to sell printing services and related accessories. Respondent advertises the sale of custom print mugs and apparel, which is directly in competition with the established CANVA PRINT offerings sold by Complainant. Given the composition of the Domain Name and the fanciful nature of Complainant’s CANVA mark, it is highly likely that customers of Complainant may be led to believe that the Domain Name’s site is either controlled or authorized by Complainant – when this is not the case. Additional features that increase the likelihood of, and reinforce, Internet-user confusion include Respondent’s use of a similar favicon to that of Complainant’s (i.e., a similarly styled “C” within a colorful bubble).
Complainant states that Respondent does not, as far as Complainant can tell, provide a disclaimer on the Domain Name’s site (which could otherwise be used to convey to Internet users that Respondent’s purported offering is not in any way connected to Complainant). The lack of a disclaimer in circumstances where there is a likelihood of Internet user confusion has been held repeatedly to be evidence of bad faith under the Policy.
Complainant asserts that UDRP panels have found that the use of a confusingly similar domain name to direct Internet users to a respondent’s own site, and for the purposes of selling (or purporting to sell) similar goods to a complainant, constitutes evidence of bad faith registration and use. Panels in such cases have also found that a respondent’s sale of similar goods under a complainant’s marks carries a risk of implied affiliation with the complainant.
In summary, Complainant submits that Respondent has used the Domain Name to create confusion and capitalize on the renown of Complainant’s CANVA and CANVA PRINT offerings for the purposes of deriving commercial gain. This conduct amounts to bad faith use within the meaning of paragraph 4(b)(iv) of the Policy. In view of the foregoing, Complainant requests that the Panel makes a finding of bad faith registration and use under the Policy.
B. RespondentRespondent denies and disputes all statements, averments, allegations, and contentions made and raised in the Complaint. Respondent states that it provides image processing services, namely, photographic image processing, printing of images on banners, fabric, 3-dimensional structures and printing of photographic images from digital media; and printing services. Respondent states that it takes a photo of pets and designs one of the masterpieces, which they print on the product of the customer’s choice.
Respondent claims that it “honestly and banafidely [sic] adopted trade mark and obtained registration of the domain name printcanva.com on 17th December 2020”. Respondent claims that it has followed due procedure of law for obtaining the registration of the Domain Name.
Respondent further states that it has spent, incurred and invested a sufficient amount of money, labor, skill, time, energy and expertise in establishing its image processing services, namely, photographic image processing, printing of images on banners, fabric, 3-dimensional structures, printing of photographic images from digital media; and printing services under the brand and now enjoys monopoly and exclusivity for its work. Respondent claims that through the quality of services it provides, it has acquired a unique identity, reputation and recognition in the field.
Respondent claims it was not aware of the registration of the trademark CANVA, and that it had no intention to copy Complainant’s CANVA mark.
Respondent states it believes in the spirit of fair play, trade harmony, and good conscience. Thus, Respondent, in response to Complainant’s letter, states it is ready to resolve the dispute by transferring the Domain Name to Complainant, “subject to consideration of 150,000.00 USD as Respondent has spent, incurred and invested sufficient amount of money, labour, skill, time, energy and expertise in establishing and protecting [the] brand and domain name printcanva.com.”
Respondent has stated it wants to settle the matter amicably and does not want any kind of dispute because disputes hamper business. In light of the willingness to settle the matter amicably on the part of Respondent, Respondent requests that Complainant “settle the matter amicably and provide response to Respondent’s proposal as soon as possible.”
6. Discussion and FindingsIn order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
The Panel determines that Complainant has demonstrated it has rights in its registered CANVA and CANVA PRINT trademarks, both through registration and significant public recognition and widespread use of the marks in commerce.
The Panel finds that the Domain Name incorporates the CANVA mark in its entirety. The Domain Name also incorporates the CANVA PRINT mark, while reversing the two terms of the mark. Numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the exact reversal of the words in Complainant’s CANVA PRINT mark does not avoid confusing similarity. See Six Continents Hotels, Inc. v. Wang Qing Feng,WIPO Case No. D2016-0194.
Accordingly, the Panel finds that the Domain Name is identical or confusingly to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsRegarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to rebut adequately Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s CANVA and CANVA PRINT trademarks and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use. Moreover, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Instead, the Domain Name, which is comprised of Complainant’s well-established, distinctive, and fanciful CANVA mark, as well as its CANVA PRINT mark (placed in reverse order), directs users to Respondent’s website where it appears to offer competing services (e.g., printing and prints on related accessories, mugs and tee-shirts). The Panel observes that the terms “printcanva” or “print canva” have no descriptive meaning related to pet portraits, mugs, and t-shirts, while they do directly refer to Complainant’s pre-existing CANVA and CANVA PRINT marks. Although the Domain Name is not identical to either of Complainant’s marks, it nevertheless effectively impersonates Complainant’s brand identity and redirects users to an unrelated and competitive site. This use does not support a claim to any right or legitimate interest in the Domain Name. See Roberto Federico Wille Buschmann and Industrial Esco-will, S.A. de C.V. v. STX – Dominios, STX,WIPO Case No. D2017-2581 (‘the redirecting of the disputed domain name to a website offering similar and competing products to those marketed by the Complainant, is neither a bona fide offering of goods nor a legitimate noncommercial or fair use of the disputed domain name under subparagraphs (i) and (iii) of Policy paragraph 4(c)”).
Further, regarding the issue of whether Respondent is commonly known by the Domain Name, the Panel determines that in this case, the evidence establishes that Respondent’s registration of the company, Printcanva Ltd, does not confer it with any rights or legitimate interests. Complainant submitted evidence that Respondent had actual knowledge of Complainant’s CANVA brand and offerings through a series of Instagram posts from Respondent’s account, which reference Complainant’s offerings (e.g., as a recommended graphic design tool). Respondent then registered the Domain Name, followed by the registration of the company name with Companies House in the United Kingdom. In response to Complainant’s evidence, Respondent asserts in a conclusory fashion that it was not aware of the registration of the CANVA mark and that it had no intention to copy that mark. The Panel finds, on the balance of the probabilities, that this denial is not supported by the evidence, and that Respondent’s registration of a company name is not sufficient for the purposes of the Policy to establish that Respondent is commonly known by such name, when that name had been chosen because of its association with Complainant. See Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Gedion Kitili, TrendPro Systems Limited,WIPO Case No. D2019-0447 (“Under the circumstances of this case, noting the fame of the Complainant’s mark, the Panel would find it more likely that the corporate registration was made with the Complainant in mind and thus, in any event, finds that the Respondent is not commonly known by the disputed domain name for purposes of the Policy.”).
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, there is little doubt that Respondent was aware of Complainant and its CANVA and CANVA PRINT brands and marks, and intentionally targeted them, when registering the Domain Name. Complainant’s earliest trademark registration for CANVA predates registration of the Domain Name by more than 8 years, and Complainant has provided evidence of the strong reputation of its CANVA mark internationally, as well as evidence that Respondent was aware of Complainant and its CANVA brand before registering the Domain Name. Respondent could have performed a simple trademark search before registering the Domain Name, which copies Complainant’s pre-existing CANVA and CANVA PRINT marks. See WIPO Overview 3.0, section 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”). Thus, given the distinctiveness and reputation of Complainant’s CANVA and CANVA PRINT marks, the timing of the registration of the Domain Name after Complainant had establish rights in its marks, and the fact that the Domain Name is so obviously connected with Complainant’s marks, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its marks when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered).
This point is further confirmed by Respondent’s use of the Domain Name in bad faith. The Domain Name redirects to Respondent’s own website, which purports to offer services – printing and related accessories, mugs and tee-shirts – which compete with Complainant’s business offerings. Moreover, Respondent appears to be a website design firm, which is also in a competitive space with Complainant. The Panel determines that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Factors that support this conclusion include the nature of the Domain Name itself, which incorporates Complainant’s distinctive CANVA and CANVA PRINT marks; the lack of Respondent’s own rights to or legitimate interests in the Domain Name; redirecting the Domain Name to Respondent’s own website, where competitive content is presented; the absence of any conceivable good faith use of the Domain Name by Respondent; and the lack of a disclaimer on Respondent’s website in these circumstances, where there is a strong possibility of user confusion. See e.g., Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras,WIPO Case No. D2011-2011 (respondent registered and used a domain name that incorporated the complainant’s well-known trademark, with the mere addition of two generic words; the domain name was used to resolve to a website where financial services were offered, without respondent having rights or legitimate interests in the domain name); Vision Service Plan d/b/a VSP Corporation v. Registration Private / Domains By Proxy, LLC / Michael Rahimzadeh,WIPO Case No. D2016-0548 (by offering for sale sunglasses on its website using the domain name (the same services offered by the complainant under the EYECONIC mark), the respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor” and “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] web site or location or of a product or service on [Respondent’s] web site or location”); see also KIKO S.p.A. v. Registration Private, Domains By Proxy, LLC / Blake Spencer,WIPO Case No. D2019-1301 (“There appears to be no disclaimer disassociating such website from Complainant, which also is indicative of bad faith”).
The Panel also finds that Respondent’s “settlement offer “, requesting that Complainant pay USD 150,000 for transfer of the Domain Name, as to which Respondent had no rights in the first place, is further evidence of bad faith.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Domain Name
Christopher S. Gibson
Sole Panelist
Date: October 19, 2021