WIPO Domain Name Decision D2021-3953 for canvafe.com, canvaflix.com, cashcanva.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Canva Pty Ltd v. Domain Admin, Protec, LLC (PrivacyProtect.org) / Rodrigo Cezario Dos Santos Case No. D2021-3953 1. The Parties

The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.

The Respondent is Domain Admin, Protec, LLC (PrivacyProtect.org), United States of America (“United States”) / Rodrigo Cezario Dos Santos, Brazil.

2. The Domain Names and Registrar

The disputed domain names , , and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On November 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 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 December 7, 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 December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022.

On December 22, 2021, the Respondent sent an informal email communication to the Center. On January 4, 2022, the Center sent an email to the Parties regarding a suspension of the proceeding to explore settlement options. On the same day, the Complainant replied that it did not wish to suspend the proceeding. In reply to the Complainant’s email communication, the Respondent indicated that it was no longer interested in keeping the disputed domain names.

Pursuant to paragraph 6 of the Rules, the Center notified the Parties of the commencement of the Panel appointment process on January 19, 2022. The Center appointed Luca Barbero as the sole panelist in this matter on February 10, 2022. 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.

On February 10, 2022, the Respondent sent an additional communication to the Center stating all disputed domain names were inactive and that he had no intention of associating them to any websites.

4. Factual Background

The Complainant operates since 2012 an online graphic design platform at “www.canva.com”, providing thousands of images and templates to choose from when creating graphic designs.

The Complainant is the owner of several trademark registrations for CANVA, including the following, as per trademark certificates submitted as Annex 11 to the Complaint:

- United States trademark registration No. 4,316,655 for CANVA (word mark), filed on August 7, 2012, and registered on April 9, 2013 in International Class 42;

- Australia Trade mark registration No. 1483138, for CANVA (word mark), filed on March 29, 2012, and registered on September 9 2013, in Class 9;

- International Trademark registration No. 1204604, for CANVA (word mark), registered on October 1, 2013, in International Class 9.

The Complainant is also the owner of the domain name , which was registered on May 5, 2001, and is used by the Complainant to promote its services under the trademark CANVA.

The disputed domain names , registered on August 29, 2021, registered on August 5, 2021, and , registered on September 16, 2021, are all resolving to inactive websites. According to the screenshots in Annex 14 to the Complaint, the disputed domain name previously resolved to a website advertising a subscription service to some of the CANVA templates, publishing a logo that was very similar to that of the Complainant and an image of the Complainant’s application for mobile devices.

5. Parties’ Contentions A. Complainant

The Complainant informs the Panel that it offers its online graphic design services, as a basic package, for free, and a paid version named “Canva Pro”, which has more features and design capabilities. The Complainant states that its “Canva Pro” version is a well-known version of the Complainant’s services, aimed predominantly at professionals or graphic design teams within companies. It points out that global organizations such as Anytime Fitness, Huff Post, Greenpeace, and Duke University, among others, use the Complainant’s “Canva Pro” services.

The Complainant highlights that the Complainant’s services are offered exclusively online, which is inherently global. It also indicates that, within its first year, the Complainant had 750,000 users, and had raised USD 3 million in seed funding. It also received recognition for having the venture capitalist Guy Kawasaki join the company in 2014

The Complainant also states that it has 97 employees spread across offices in Sydney, Manila, and Beijing, and that, as of 2019, it was valued at USD 3.2 billion, with 20 million users across 190 countries.

The Complainant contends that disputed domain names , , and are confusingly similar to the trademark CANVA in which the Complainant has rights as they all reproduce the trademark in its entirety with the mere addition of the words like “flix”, “cash”, and the letters “fe”, followed by the generic Top-Level Domain “.com”.

With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent is not commonly known by the disputed domain names, has never been granted any trademark rights in the term “canva” and has never received any license from the Complainant to use the disputed domain names including the trademark CANVA.

The Complainant further contends that the Respondent is not making a bona fide offering of goods or services through the disputed domain names as they currently resolve to inactive websites and the disputed domain name previously resolved to a website advertising a subscription service to some of the Complainant’s templates available on its CANVA platform, publishing a logo that was very similar to that of the Complainant. The Complainant informs the Panel that such content was removed following a cease-and-desist letter sent to the Respondent. The Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark CANVA.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its first trademark registration predates the registration date of the disputed domain names by eight years and that the Complainant during that time had gained considerable goodwill and world renown, it is unlikely that the Respondent could not have been aware of the Complainant at the time of registering the disputed domain names.

The Complainant emphasizes that the Respondent also opted to ignore an initial cease and desist letter sent by the Complainant’s representatives regarding the disputed domain name , and instead took active steps to register the other two disputed domain names, i.e. , which was registered two days after the sending of the Complainant’s cease and desist letter, and , registered 20 days later. The Complainant also states that a further cease and desist letter was sent for the disputed domain name , which was also ignored by the Respondent. The Complainant concludes that such behavior only serves to confirm the Respondent’s bad faith.

The Complainant underlines that the Respondent’s initial use of the disputed domain name was intended for commercial gain, since the website advertised services with related pricing, in an intentional attempt to attract users to the disputed domain name using the renowned trademark CANVA, whilst causing confusion to online users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, since the templates offered were in direct competition to those offered by the Complainant.

The Complainant also asserts that the current passive use of all three disputed domain names does not preclude a finding of bad faith use and that, by registering the three disputed domain names containing the trademark CANVA, the Respondent has engaged in an abusive pattern of conduct, which is also evidence of bad faith.

B. Respondent

As highlighted in the Procedural History, the Respondent did not file a formal Response but sent informal email communications to the Center in which he stated that he was no longer interested in keeping the disputed domain names and that he was not intending to associate any website to any of them.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark CANVA based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 11 to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In the case at hand, the three disputed domain names all incorporate the trademark CANVA in its entirety with the addition of the terms “flix” and “cash” and the letters “fe” followed by the generic Top-Level Domain “.com”, which the Panel finds does not prevent a finding of confusing similarity.

Indeed, as found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you 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 (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 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.”

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Moreover, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names, that the Respondent has made use or preparations to use the disputed domain names in connection with a bona fide offering of goods or services, or that he intends to make a legitimate, noncommercial or fair use of the disputed domain names, and the Respondent has not provided any evidence to the contrary.

Indeed, according to the screenshots submitted by the Complainant, which have not been challenged by the Respondent, the disputed domain name was previously pointed to a website offering a subscription service to some of the Complainant’s templates made available through its CANVA platform, whilst publishing a logo that was very similar to that of the Complainant and displaying a picture showing the Complainant’s application for mobile devices. In view of such use of the disputed domain name, users visiting the Respondent’s website could have been misled into believing that the website was operated by the Complainant or one of its affiliated entities. As stated in prior panel decisions, when the content of a Respondent’s website appears designed to reinforce the Internet user’s impression that the disputed domain name belongs to a complainant, such use cannot constitute a bona fide offering of goods or services.

As indicated above, all the three disputed domain names are currently not redirected to active websites. As held inter alia in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483, and Lennar Pacific Properties Management, Inc., Lennar Corporation v. Badboi ot,WIPO Case No. D2020-1419, said passive use is to be considered neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain names.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the trademark CANVA, used by the Complainant to provide its graphic design services via the website “www.canva.com”, and considering the Respondent initially provided services identical to the ones of the Complainant under the disputed domain name , where a logo similar to that of the Complainant was displayed, the Respondent was clearly aware of the Complainant’s trademark when it registered the disputed domain names, with which they are confusingly similar.

As to bad faith use, the Panel finds that, by initially pointing the disputed domain name to a website promoting and offering a subscription service to some of the Canva’s templates, publishing a logo that was very similar to that of the Complainant and displaying also an image of the Complainant’s application for mobile devices, the Respondent had intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the trademark CANVA as to the source, sponsorship, affiliation or endorsement of his website and the services promoted therein according to paragraph 4(b)(iv) of the Policy.

In view of the circumstances of the case, the Panel finds that the current passive holding of the disputed domain names does not prevent a finding of bad faith use. As also established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.

The Panel also finds that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in corresponding disputed domain names and has engaged in a pattern of such conduct according to paragraph 4(b)(ii) of the Policy, since he registered three disputed domain names incorporating the Complainants’ trademark. See section 3.1.2 of the WIPO Overview 3.0: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark abusive domain names, even where directed at the same brand owner”.

As an additional circumstance evidencing the Respondent’s bad faith, the Panel notes that the Respondent also failed to respond to the Complainant’s cease and desist letters. See Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises,WIPO Case No. D2008-1003, in which the Panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.” Moreover, two of the disputed domain names have been registered after the Respondent’s receipt of the cease and desist letter sent by the Complainant’s representative.

 

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain names in bad faith according to paragraph 4(a)(iii) 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 names , , and be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: February 24, 2022

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