ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Canva Pty Ltd v. Milen Radumilo Case No. D2023-2990 1. The Parties Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom. Respondent is Milen Radumilo, Romania. 2. The Domain Name and Registrar The Disputed Domain Name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2023. On July 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 2023, 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 (Redacted For Privacy Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to Complainant on July 17, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 19, 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 July 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 17, 2023. The Center appointed Michael A. Albert as the sole panelist in this matter on August 23, 2023. 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. page 2 4. Factual Background Complainant, Canva Pty Ltd, is an online graphic design platform founded in 2012 by Melanie Perkins, Cliff Obrecht and Cameron Adams. Complainant was valued at USD 40 billion in September 2021 and currently has more than 100 million active users per month (MAUs) with customers across 190 countries. Complainant offers services from its main website, "www.canva.com". Third-party Internet traffic statistics indicate that Complainant's main website received an average of more than 450 million visits per month between March and May 2023. Complainant holds numerous trademarks for CANVA, including United States trademark registration Nos. 4316655, registered on April 9, 2013 and 6114099, registered on July 18, 2020. The Disputed Domain Name was registered on March 17, 2023, and it resolves to a website with pay-per-click ("PPC") links. 5. Parties' Contentions A. Complainant Complainant contends that the Disputed Domain Name is confusingly similar to trademarks in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. There is no evidence of Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name in connection with any bona fide offering of goods or services. Respondent has not been commonly known by the Disputed Domain Name, nor is Respondent is making legitimate fair use or legitimate noncommercial use of the Disputed Domain Name. Respondent registered and is using the Disputed Domain Name in bad faith. Complainant notes Respondent's activation of mail exchange records for the Disputed Domain Name and emphasizes the risk that could be caused to unsuspected customers of Complainant on receipt of emails from the Disputed Domain Name. Complainant alleges that Respondent has likely engaged in or will engage at some point in phishing activity with the Disputed Domain Name as it includes Complainant's CANVA mark. The use of PPC links on the Disputed Domain Name constitutes a clear attempt to generate a commercial gain. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established that it has rights in the CANVA trademarks. The Disputed Domain Name is confusingly similar to Complainant's well-known CANVA mark because it contains the entirety of Complainant's mark with the addition of the term "explain" and the generic Top-Level domain ("gTLD") ".com". Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. page 3 B. Rights or Legitimate Interests Complainant confirms that Respondent has not received any license from Complainant to use the Disputed Domain Name. There is no evidence that Respondent is commonly known by, or holds any other rights or legitimate interests in the Disputed Domain Name. There is no evidence demonstrating a bona fide offering of goods or services by Respondent. Respondent has not responded to Complainant's prima facie showing that Respondent lacks rights or legitimate interests, and thus has failed to rebut that showing. Further, Respondent has been using the Disputed Domain Name as a PPC webpage containing links related to other products and services. Doing so reflects the lack of a bona fide offering of goods or services under or in connection with the Disputed Domain Name. As per the WIPO Overview 3.0, section 2.9, parked pages "comprising PPC links [do] not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant's mark". The Disputed Domain Name incorporates Complainant's trademark, with the addition of the word "explain". It is reasonable to infer that Respondent uses the Disputed Domain Name to unfairly capitalize upon and take advantage of Complainant's reputation and the confusing similarity of the Disputed Domain Name with the CANVA mark. Such use cannot provide Respondent with a legitimate interest, as discussed in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 and in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant's earliest trademark registration predates the creation date of the Disputed Domain Name by more than 10 years. Given the long use of Complainant's well-known CANVA marks, and the incorporation of that mark into the Disputed Domain Name, it seems highly likely that Respondent knew of the CANVA mark at the time Respondent registered and began using the Disputed Domain Name. The selection of a domain name that is so obviously connected to a complainant's trademark strongly suggests "opportunistic bad faith", particularly where it is held by someone with no affiliation with Complainant (see Singapore Airlines Ltd v. European Travel Network, WIPO Case No. D2000-0641, and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798, where the panel also highlighted the fact that Complainant's mark predated Respondent's registration of the domain name, which is also true in the current case). There is no plausible reason for the registration of the Disputed Domain Name other than to take advantage of the goodwill and valuable reputation attached to the CANVA brand. Further, Respondent uses the Disputed Domain Name to direct Internet users to a webpage displaying PPC links such as "Canvas Photo Prints" and "Photos to Canvas", which are likely intended to generate revenue. Intentionally attempting to attract, for commercial gain, Internet users to a competing website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or other location, constitutes bad faith. The Panel finds that Complainant has satisfied 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 Name, be transferred to Complainant. /Michael A. Albert/ Michael A. Albert Sole Panelist Date: September 6, 2023
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