The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Bruno BATISTA da Silva, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent sent several informal emails to the Center on December 22, 2021 and December 23, 2021. On January 12, 2022, the Center wrote to the parties that if they wished to explore settlement options, the Complainant should submit a request for suspension. The Complainant responded on January 12, 2022, that it did not wish that the proceedings be suspended, because it had sent a settlement form to the Respondent on December 22, 2021, but the Respondent did not sign it.
The Center appointed Andrea Mondini as the sole panelist in this matter on January 26, 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.
4. Factual BackgroundThe Complainant is an online graphic design platform founded in 2012 offering users images and templates for creating graphic designs. The Complainant has more than 900 employees and 20 million users across 190 countries.
The Complainant owns several trademarks with the element CANVA, inter alia, the United States trademark registration CANVA (Registration No. 4316655 registered on April 9, 2013 in class 42) and the Australian trademark registration CANVA (Registration No. 1483138, registered on September 9, 2013 in class 9).
The Complainant uses its main website “www.canva.com” to offer its services.
The disputed domain name was registered on July 6, 2021.
The disputed domain name resolves to a website advertising templates, subscription services and online courses for artwork creation using a logo similar to the Complainant’s logo.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
The CANVA brand is well-known around the world. The disputed domain name is confusingly similar to the CANVA trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the words “o photo” (which could mean “the photo”) is not sufficient to avoid confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use its trademark.
The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark CANVA at the time it registered the disputed domain name.
The Respondent uses the disputed domain name in bad faith because it resolves to a website advertising templates, subscription services and online courses using a logo similar to the Complainant’s logo, thereby intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark CANVA.
Moreover, the Respondent ignored a cease and desist letter sent by the Complainant’s representative on August 13, 2021.
B. RespondentThe Respondent did not submit a formal response, but sent several emails on December 22 and 23, 2021, stating in essence that he uses the site posted under the disputed domain name “to sell training” and that he was prepared to take this site down and make the disputed domain name available to the Complainant.
However, the Respondent did not sign a settlement agreement, which the Complainant sent him on December 22, 2021.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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.
The Panel is satisfied that the Complainant owns trademark registrations for its CANVA trademark.
The Panel notes that the disputed domain name incorporates the CANVA trademark in its entirety. The addition of the word “o photo” (which could mean “the photo”) does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark CANVA.
The first element of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate InterestsThe Complainant states it has not authorized the Respondent to use the trademark CANVA and that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent implicitly admitted this in his email of December 22, 2021, by stating in essence that he was prepared to take this site down and make the disputed domain name available to the Complainant.
In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s trademark and the term “o photo”, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The second element of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad FaithThe Complainant has shown to the satisfaction of the Panel that its CANVA trademark is well-known for its online graphic design platform.
In the view of the Panel, considering that the Respondent used the disputed domain name for similar services and with a similar logo, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademark CANVA. In the circumstances of this case, this is evidence of registration in bad faith.
The disputed domain name resolves to a website using a logo similar to the Complainant’s logo and offering services related to artwork creation that are similar to those offered by the Complainant. In the Panel’s view, the Respondent thereby intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark CANVA and services.
The Panel thus finds that the disputed domain name was registered and is being used in bad faith.
The third element of paragraph 4(a) of the Policy has been met.
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
Andrea Mondini
Sole Panelist
Date: February 9, 2022