The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf / Orlando Watson, Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 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 November 2, 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 November 2, 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 November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2021. The Center appointed Miguel B. O’Farrell the sole panelist in this matter on November 30, 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, Canva Pty Ltd, is an online graphic design company founded in 2012 in Australia. Users of the Complainant’s services have thousands of images and templates to choose from when creating graphic designs. The Complainant’s services are offered exclusively online, which make them inherently global. The Complainant owns several CANVA trademarks duly registered, including the following: Australian Trademark Registration No. 1483138, registered on September 9, 2013, in class 9; United States of America Trademark Registration No. 4316655, registered on April 9, 2013, in class 42; and International Trademark Registration No. 1204604, registered on October 1, 2013, in class 9. The Complainant has established a social media presence and uses de CANVA mark to promote its services, in particular on Facebook: “www.facebook.com/canva”; Twitter: “www.twitter.com/canva” and Instagram: “www.instagram.com/canva”. The disputed domain name The Complainant’s representatives sent a cease and desist letter to the Respondent on August 10, 2021, which remained unanswered. 5. Parties’ Contentions A. Complainant The services offered by the Complainant under the CANVA online website relate to a variety of uses. Online users can create leaflets, social media posts, and even website designs. The Complainant’s services have achieved significant reputation and acclaim. The 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. The Complainant claims that the disputed domain name is confusingly similar with the trademark CANVA in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. More specifically, to the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term CANVA. There is no evidence that the Respondent holds any unregistered right to the term CANVA. Moreover, the Respondent has not received any license from the Complainant to use a domain name which features the CANVA trademark. The Complainant submits that the Respondent is not known, nor has it ever been known as CANVA. The CANVA trademark is distinctive and not used in commerce other than by the Complainant. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the trademark CANVA mentioned in paragraph 4 above (Factual Background). The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the trademark CANVA to assess whether the mark is recognizable within the disputed domain name. The disputed domain name entirely includes the Complainant’s mark with the addition of the word “designers” which is insufficient to prevent a finding of confusing similarity between the disputed domain name As stated in section 1.8 of WIPO Panels Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, as in this case, the addition of other terms would not prevent a finding of confusing similarity under the first element. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, as it is viewed as a standard registration requirement, as noted in section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the disputed domain name is confusingly similar with the trademark CANVA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production 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. There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is an official site of the Complainant. As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a risk of implied affiliation. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark CANVA mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name on July 11, 2021. The Complainant has submitted evidence to support its claim that the trademark CANVA is widely known and was registered and used many years before the Respondent registered the disputed domain name. The Respondent, when registering the disputed domain name, has targeted the Complainant’s trademark by using CANVA in conjunction with the word “designers” which relates to the Complainant’s primary business, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith. The Respondent’s failure to respond to the cease and desist letter sent by the representatives of the Complainant on August 10, 2021 also supports an inference of bad faith (as stated in section 3.2.1 of WIPO Overview 3.0). Given the great similarity of the disputed domain name with the Complainant’s CANVA trademark, the Respondent’s use of the disputed domain name to host a PPC page constitutes a clear attempt to generate commercial gain by creating likelihood of confusion with the Complainant’s trademark. The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used CANVA trademark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy. 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 Miguel B. O’Farrell
Sole Panelist
Date: December 14, 2021
Full & Egal Universal Law Academy