The Complainant is Canva Pty Ltd., Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Proxy Protection LLC, United States of America / Great Opomu, Digitslite, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 22, 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 25, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on December 21, 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, which was created ten years ago. It has become very popular for the creation of designs and supports for presentations, social media posts and other print products. So far 3 billion designs have been created by users around the globe using the online platform of the Complainant. That represents an average of 80 designs per second. The Complainant’s platform is used by 30 million users monthly. According to the latest information available online, the website of the Complainant, hosted at “www.canva.com”, is ranked 29 at the Alexa Ranking of top 500 sites on the web.
The Complainant relies on several trademarks as a basis for its Complaint, including:
- Australian trademark No. 1483138 over the word CANVA, registered on September 9, 2013;
- International trademark No. 1204604 over the word CANVA, registered on October 1, 2013.
The disputed domain name
The disputed domain name is used in connection with a website offering products for designers, such as fonts, mockup design tools and apps prototyping. Also, other unrelated products are offered, such as a wooden chair, an iPhone dock, and others. Overall, the website of the Respondent is not complete, and its aspect is rather artificial. For example, it includes quotations in Latin, which are inserted in some areas to fill-in space. The brand displayed on top of the website is CANVAFLAT. Another brand, WOODMART, is also displayed at the bottom. This brand and its contact details also appear on other, unrelated websites.
Failing any response to a cease-and-desist letter sent to the Respondent on August 10, 2021, the Complainant decided to initiate this proceeding.
5. Parties’ Contentions A. ComplainantThe arguments of the Complainant can be summarized as follows:
On the first element of the Policy, the Complainant states that “the Disputed Domain Name incorporates the Complainant’s distinguished CANVA mark in its entirety, and is only proceeded by the generic word
‘flat’”.
On the second element of the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not appear to be known under the disputed domain name, does not hold trademark rights over the disputed domain name, and was not granted any license or other authorization over the trademark CANVA of the Complainant. Also, the Respondent is not making a bona fide use of the disputed domain name. In this respect, the Complainant notes that “[a] closer inspection of the site indicates that few changes have been made to the default ‘Woodmart’ template selected by the Respondent. Most of the homepage’s hyperlinks do not function, and the address at the bottom (…) is found on other unrelated, and evidently also incomplete, sites”. Lastly, the Complainant indicates that the use by the Respondent of a domain name which includes its trademark CANVA, to commercially compete with the Complainant’s services does not constitute a bona fide offering of goods or services.
On the third element of the Policy, the arguments of the Complainant are twofold. First, on the bad faith registration, it claims that the Respondent knew, or should have known, of the existence of its trademark CANVA and its substantial goodwill. Any search online on popular search engines, any search on trademark databases, would have revealed the existence of the Complainant and its rights over CANVA. Also, the lack of response to its cease-and-desist letter confirms, presumably, a registration of the disputed domain name in bad faith. Second, the Complainant claims that the Respondent has used the disputed domain name in bad faith, in order to attract Internet users by creating a likelihood of confusion with its trademark CANVA: “The likelihood of confusion among Internet users with the Complainant’s offerings is exacerbated through, among other things, the Respondent’s use of the CANVA term in the resolving site’s ‘Canvaflat’ heading/logo and the commercial advertisement of font packages, design tools and related goods”.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has shown that it holds rights over the trademark CANVA.
The disputed domain name
As the disputed domain name includes the Complainant’s trademark in its entirety combined with a term that does not prevent the Complainant’s trademark from being recognizable in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Therefore, the first element of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 3.0, section 2.1).
In that sense, the Panel finds that the Complainant has made a prima facie case against the Respondent, who has not been commonly known by the disputed domain name and is not affiliated with the Complainant nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating the Complainant’s trademark CANVA.
Failing any indication in the Complait on the relevance of the word “flat” in the disputed domain name, the Panel has undertaken a quick search which has revealed that “flat” is descriptive of a specific technique in the design sector: “Flat design is a user interface design style that uses simple, two-dimensional elements and bright colors. It is often contrasted to the skeuomorphic style that gives the illusion of three dimensions through copying real-life properties. Its popularity became prominent with the release of Windows 8, Apple’s iOS 7, and Google’s Material Design, all of which utilize flat design” (quotation extracted from https://www.interaction-design.org/literature/topics/flat-design).
Therefore, the nature of the disputed domain name, comprising the Complainant’s well-known trademark and a descriptive term, carries a risk of implied affiliation and suggests sponsorship or endorsement by the Complainant. Accordingly, fair use is no foreseeable. See WIPO Overview 3.0, section 2.5.1.
Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithIn order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] 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 complainant from reflecting the complainant’s trademark or service 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 [the respondent’s] 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.
A series of elements confirm that the disputed domain name was registered, and is being used, by the Respondent in bad faith:
- The Respondent has configured the disputed domain name with the association of the trademark CANVA of the Complainant, which enjoys a very strong reputation in the field of graphic design, with the word “flat” which is descriptive in this field;
- The Respondent has then used a preexisting website template and brought a few arrangements to it, to make it look like a website offering products for graphic designers. This superficial arrangement, in which many unrelated features of the initial template remain visible, confirms bad faith use, and confirms the targeting of the Complainant’s services. The Respondent attempted to create confusion with the Complainant’s trademark, in order to attract Internet users.
- The Respondent concealed its identity with the assistance of a privacy shield, and then declined to respond to the cease-and-desist letter of the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. The Complaint succeeds.
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,
Benjamin Fontaine
Sole Panelist
Date: January 4, 2022