ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Canva Pty Ltd v. Sanket Patil Case No. D2023-0135 1. The Parties Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom. Respondent is Sanket Patil, India. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2023. On January 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on January 16, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 17, 2023. 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 Respondent of the Complaint, and the proceedings commenced on January 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 20, 2023. The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 3, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is Canva Pty Ltd, an Australian online graphic design platform and currently has more than 100 million monthly active users with customers in 190 countries. Complainant offers exclusively online services from its main site, with a basic package for free and a paid version with more features. Complainant owns a wide portfolio of trademark registrations internationally containing the word mark CANVA, such as: Registration No. Trademark Jurisdiction International Class Date of Registration 1483138 CANVA Australia 9 March 29, 2012 4316655 CANVA United States 42 April 09, 2013 1204604 Canva International Trademark 9 October 01, 2013 6114099 United States 9, 42 July 28, 2020 The disputed domain name was registered on January 17, 2022, and it resolves to a website which is restricted by the browser's security and antivirus system for potentially dangerous content. 5. Parties' Contentions A. Complainant Complainant pleads that the disputed domain name is identical or confusingly similar to the registered trademark CANVA, since it fully incorporates Complainant's trademark CANVA. Complainant further contends that its business is well known around the world for the trademark CANVA. Complainant affirms that the disputed domain name uses the trademark CANVA in its entirety with the addition of the term "templates" - which would not avoid a confusing similarity between the disputed domain name and Complainant's registered trademark as Complainant operates an online graphic design platform that provides templates. As to the generic Top-Level Domain ("gTLD") ".store", part of the disputed domain name, Complainant asks the Panel to disregard it under the first element as it is a standard registration requirement as in WIPO Overview 3.0, Guideline 1.11.1. page 3 Therefore, according to Complainant, the disputed domain name is confusingly similar with Complainant's trademark CANVA, fulfilling paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules. In addition, Complainant states that Respondent does not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further, Respondent has not been authorized, or licensed to use Complainant's trademark CANVA as a domain name nor is Respondent associated with Complainant. Complainant states that, prior to the sending of a cease and desist letter to Respondent, the disputed domain name was being used to offer various template designs and bundle packages, offering services identical to Complainant's without authorization from Complainant, which would indicate that the use of the disputed domain name would not constitute a bona fide offering of goods and services, nor represent a legitimate noncommercial or fair use of the disputed domain name. Accordingly, Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules have been fulfilled. Thus, according to Complainant, the requirements for the identification of bad faith registration and use of the disputed domain name have been fulfilled, pursuant to paragraph 4(a)(iii) 4(b); Rules, paragraph 3(b)(ix)(3) of the Policy. Accordingly, Complainant requests transfer of the disputed domain name to Complainant. B. Respondent Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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 burden of proving these elements is upon Complainant. Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel's decision shall be based upon the complaint. A. Identical or Confusingly Similar Complainant has duly proven that they own prior trademark rights for CANVA, and that the disputed domain name is constituted by the trademark CANVA in its entirety with the addition of the word "templates". The addition of the term "templates" does not prevent a finding of confusing similarity with Complainant's trademark CANVA - since the trademark CANVA is fully integrated and recognizable in the disputed domain name. page 4 Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark CANVA, and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") as follows: "[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element." In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant's contentions, the Panel has considered Complainant's unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, Respondent has not used the disputed domain name in the context of a bona fide offering that could demonstrate rights or legitimate interests, since the evidence shows that the confusingly similar disputed domain name resolves to a website which access is restricted via antivirus for security reasons and prior to a cease and desist letter sent by Complainant offered templates for Complainant's services (as duly demonstrated in Annexes 17 and 18 to the Complaint), which does not suggest a right or legitimate interest in the disputed domain name. Therefore, the Panel finds that the requirement of the second element of paragraph 4(a) of the Policy is also satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of registration and use of a domain name in bad faith. Respondent has registered the disputed domain name that fully incorporates Complainant's well-known trademark CANVA, plus the addition of the word "templates". The Panel finds that it was duly demonstrated that Respondent must have been aware of Complainant's rights to the trademark CANVA at the time of the registration - as Complainant enjoys a worldwide reputation with the use of the referred trademark, as previously recognized by the panels in Canva Pty Ltd v. Contact Privacy Inc. Customer 0162636820 / Andrea Banfi, Canva Templates, WIPO Case No. D2022-2195, Canva Pty Ltd v. miracleellis, WIPO Case No. D2022-2034, Canva Pty Ltd v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Jonathan dos Santos Padilha, WIPO Case No. D2022-2994 and Canva Pty Ltd v. Radha Rani, Mahu, WIPO Case No. D2021-2303. Further, evidence shows that the disputed domain name does not resolve to an active website with content, rather it resolves to a website displaying a warning message that the website potentially contains dangerous content for users, such as phishing schemes. Although it would be possible that the illegitimate activity associated with the disputed domain name would be for Respondent's commercial gain, previous UDRP panels have concluded in similar cases that such use would fit into the passive holding doctrine. See BPCE v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / pascale kiss, cherhgi, WIPO Case No. D2021-1251: page 5 "The disputed domain name does not resolve to an active website, however, Internet browsers warn of potential deceptive or phishing use when Internet users attempt to access the disputed domain name. Prior UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0." The Panel notes that the disputed domain name currently resolves to a website lacking of any content (except for a security warning message). As discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there are five circumstances that indicate if the passive holding of a domain name could be regarded as bad faith: "(i) the Complainant's trademark has a strong reputation and is widely known [.], (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, (iii) the Respondent has taken active steps to conceal its identity [.], (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate [.]." Considering all of the items listed above, the Panel finds that at least items (i), (ii), (iii), and (v) are present to this case, since (i) Complainant enjoys a well-known reputation for the trademark CANVA; (ii) Respondent has not responded to Complainant's contentions, failing to provide evidence of the use in good faith of the disputed domain name; (iii) Respondent has adopted the use of a privacy service, concealing their identity on the act of registering the disputed domain name; and (v) there is no plausible use of the disputed domain name that would not represent bad faith, especially considering that it is composed of Complainant's trademark CANVA with the addition of the word "templates". Thus, the circumstances of the present case strongly indicate that the disputed domain name is being used in bad faith. Moreover, it should be noted that Respondent's lack of response further reinforces that the disputed domain name most likely was registered and is being used in bad faith. In this sense, the panel found in Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Alexis Kane, WIPO Case No. D2021-0912 that: "The following factors were also considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent's lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent's lack of response to the cease and desist letter sent by the Complainant. See, e.g. Intesa Sanpaolo S.p.A. v. Ekkert Ida, WIPO Case No. D2018-2207; (iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy." Finally, it must be stressed that the choice of the word "template" to be a part of the disputed domain name is another indication of bad faith. In the context of graphic design, the word "template" is a generic term, without distinctiveness, and it means a form, mold or pattern used in web design. Respondent chose a word that identifies one of the main activities of Complainant, which is precisely to offer templates for use in the Internet, as it can be seen in Complainant's website ("www.canva.com/templates"). Hence, by choosing such term, Respondent showed a likelihood of intent to have a freeride on Complainant's goodwill. In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the requirement of the third element of paragraph 4(a) of the Policy is satisfied. page 6 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, , be transferred to Complainant. /Gabriel F. Leonardos/ Gabriel F. Leonardos Sole Panelist Date: March 17, 2023
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