The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Contact Privacy Inc., Customer 12410301389, Canada / Paulo Vieira, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 and informing that the language of registration agreement is Portuguese. The Center sent an email communication to the Complainant on September 1, 2021 providing the registrant and contact information disclosed by the Registrar and informing the language of registration agreement, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 2, 2021, requesting English as language of proceedings.
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 September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on November 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 BackgroundThe Complainant, Canva Pty Ltd, is an online graphic design platform founded in Australia in 2012. The Complainant’s offer services of images and templates to creating graphic designs. 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 under an online platform. As a result, the Complainant’s services have achieved significant reputation. The Complainant uses its main site “www.canva.com” to offer its services.
The Complainant offers its services, as a basic package, for free and a paid version named “Canva Pro”. Global organizations such as Anytime Fitness, Huff Post, Greenpeace, and Duke University, among hundreds of others, use the Complainant’s services.
The Complainant’s services are offered exclusively online. Within its first year, the Complainant had 750,000 users. The services offered under the CANVA brand, therefore, have a global reach.
Third-party web traffic statistics show that the Complainant’s website consistently receives over 200 million visits per month.
The Complainant has 977 employees spread across offices in Sydney, Manila, and Beijing. As of 2019, CANVA has 20 million users across 190 countries.
The Complainant also offers a “design school” which provides tutorials, courses and events. The Complainant also maintains blogs on design, marketing, branding, and photography.
Within the field of graphic design, the CANVA mark has is frequently featured in third-party lists collating the online graphic design tools available.
The Complainant holds several registered trademarks for the term CANVA, such as United States of America trademark 4316655, registered on April 9, 2013, International trademark 1204604, registered on October 1, 2013, and European Union trademark 017056656, registered on December 15, 2017.
The Complainant has also established a social media presence and uses its trademark CANVA to promote its services under this name, in particular Facebook, Twitter, and Instagram.
The disputed domain name was registered on May 27, 2021 and redirects to a Google account login website.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical or at least confusingly similar to the Complainant’s trademark CANVA. Indeed, the disputed domain name substantially reproduces the Complainant’s trademark in its entirety. The disputed domain name
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the distinctive term “canva”, nor is offering any goods or service by the term “canva”. There is no plausible reason for the registration and use of the disputed domain name, other than the motive of keeping it from the Complainant and to take advantage of the goodwill and valuable reputation attached to the CANVA brand.
The disputed domain name was registered and is being used in bad faith. There is no evidence that the Respondent uses or intends to use the disputed domain name in good faith. The Respondent has registered the disputed domain name, therefore, to attract online users to its webpage.
It is possible that the disputed domain name is used for phishing, despite the disputed domain name redirecting to an apparently authentic Google website. Even if not used for phishing, the use of the disputed domain name is in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the proceedingThe Complainant requests that the language of proceedings be English as neither the Complainant nor its representatives are familiar with the Portuguese language. The Complainant supports this request by raising several points namely that the disputed domain name contains the English word ”help” and the disputed domain name redirects to an English-language Googlewebpage.
Moreover, the Complainant argues that the commission of a translator would add unnecessary costs to the Complainant and such action is contrary to the drafter of the Policy’s intentions, which is to provide a cost-effective and expedited resolution process. Once the Respondent did not reply to the Complainant’s contentions and following the overriding principles in paragraph 10, in particular 10(b), stating that the parties should be treated equally and given a fair opportunity to present their case, and 10(c) preserving the time span of the process, the Panel agrees that compelling the translation of the case into Portuguese would not be in line with these principles. This opinion is supported by previous panels, such as General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334. Previous panel decisions affirm that the choice of language of proceedings “should not create an undue burden for the parties” (Compagnie Générale des Etablissements Michelin v. Cheng Jin Cheng (程进城),WIPO Case No. D2020-1548, citing both Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593 and Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.). Moreover, the Panel notes that the Center’s communications to the Parties have been transmitted in both English and Portuguese.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:
(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 SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the CANVA mark.
The disputed domain name wholly incorporates the CANVA mark in its entirety as its initial and only distinctive element and just adds the word “help”.
The other additional element is the Top-Level Domain (“TLD”) suffix, “.net”. As a technical requirement of registration, a TLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a 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 InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by a panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant submits that none of the circumstances apply in this case.
The Respondent does not appear to be offering any goods or services from the disputed domain name. Currently, the disputed domain name redirects to a Google webpage where online users are encouraged to sign in to their account.
The Respondent does not have any trademark rights to the term “canva” or any other terms used in the disputed domain name. There is also no evidence that the Respondent retains unregistered trademark rights to the term “canva” or any other terms used in the disputed domain name. Neither has the Respondent received any license from the Complainant to use domain names featuring the CANVA trademark.
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. As stated in the Boursorama S.A. v. Pencreach Jacques,WIPO Case No. D2021-1195: “the nature of the disputed domain name, comprising the Complainant’s well-known trade mark and a descriptive term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.”
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which the Respondent has not rebutted.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
The Complainant submits that the Respondent both registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. The Complainant’s earliest trademark registration predates the creation date of the disputed domain name by eight years. Searching “canva” on popular Internet search engines such as Google list the Complainant’s brand and services as the first result. Similarly, searching “help canva” returns results pertaining to the Complainant, particularly its official “Help Center”. Moreover, any average Internet user has access to CANVA trademark registrations, as they can be found on public trademark databases. The Respondent has registered the disputed domain name, therefore, to attract online users to its webpage in bad faith. The Respondent redirects those online users to an unrelated third-party website, where users enter in personal details. Such use is evidence of bad faith under the Policy, and is likely done for some commercial gain. It is possible that the disputed domain name is used for phishing, despite the disputed domain name redirecting to an apparently authentic Google login website. Even if not used for phishing, the use of the disputed domain name is in bad faith. Previous panel decisions made under similar circumstances concur on this point, ArcelorMittal (Société Anonyme) v. xing ye lin, lin xing ye,WIPO Case No. D2020-0767.
The Respondent provides no explanation of any potential good faith use of the disputed domain name. In all these circumstances, the Panel considers that the Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: November 22, 2021