ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Canva Pty Ltd v. Piqah Canva Master, A-2-08, zettasolutions / 1111, AZIZAH ABDULLAH, Siti Aishah Basiron, ROHIMAH MANSOR, Amierul Hadif, Muhamad Bukhari Othman, Razz Azmai, Asmath Haseena, Ruzana Afizah Ruzman, noor hana, KEEI KANG CHEAH, Muhammad Syafiq Ahmad Dani, safuwan iwan, muhd iman, Mohd Akram, MIOR MOHAMAD AZWAN, MIOR MOHAMAD KHIR, Zulu Digital Marketing, NURHANANI HUSNA BINTI HARME, Mohd Nizamuddin Abdul Nasir, NUR SYAM ZULKIFLI, Zass Juice, Danial Zamlan, Digital ROI, MUHAMMAD SAMSUDDIN, MIH LEGACY SDN BHD, Shahzarimin Salim, Arif Syazwan, ASR Success Network, Tentang Canva, Nor Azman Abd Razak, muhammad irfan nordin, Eng Guan Teh, Mastery Success, Mastery Success Sdn Bhd, AHMAD NAZRI, Muhamad Hafizuddin Ali, Nasruddin Hashim, MOHD ASMADI BIN ABDULLAH, JOHARI TEH FAIZAL, MANTLE MEDIA Case No. D2024-2058 1. The Parties The Complainant is Canva Pty Ltd, United Kingdom (“UK”), represented by SafeNames Ltd., UK. The Respondents are Piqah Canva Master, A-2-08, zettasolutions, 1111, AZIZAH ABDULLAH, Siti Aishah Basiron, ROHIMAH MANSOR, Amierul Hadif, Muhamad Bukhari Othman, Razz Azmai, Asmath Haseena, Ruzana Afizah Ruzman, noor hana, KEEI KANG CHEAH, Muhammad Syafiq Ahmad Dani, safuwan iwan , muhd iman, Mohd Akram, MIOR MOHAMAD AZWAN, MIOR MOHAMAD KHIR, Zulu Digital Marketing, NURHANANI HUSNA BINTI HARME, Mohd Nizamuddin Abdul Nasir, NUR SYAM ZULKIFLI, Zass Juice , Danial Zamlan, Digital ROI, MUHAMMAD SAMSUDDIN, MIH LEGACY SDN BHD, Shahzarimin Salim, Arif Syazwan, ASR Success Network, Tentang Canva, Nor Azman Abd Razak, muhammad irfan nordin, Eng Guan Teh, Mastery Success, Mastery Success Sdn Bhd, AHMAD NAZRI, Muhamad Hafizuddin Ali, Nasruddin Hashim, MOHD ASMADI BIN ABDULLAH, JOHARI TEH FAIZAL, MANTLE MEDIA, Malaysia. 2. The Domain Names and Registrars The disputed domain names
, and are registered with NameCheap, Inc.
page 2 The disputed domain names , and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain names and are registered with Hostinger Operations, UAB. The disputed domain names , , , , , , , and are registered with CloudFlare, Inc. The disputed domain names , , , , , , , , , , , , , , , , , , and are registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2024. On May 17, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 17, 18, 20, 21 and 24, 2024, the Registrars transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondents (Mastery Success Sdn Bhd et al.) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on June 14, 2024. 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 named Respondents of the Complaint, and the proceedings commenced on July 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2024. The Respondents sent email communications to the Center on June 12, 13, 15, 16, 18, 19, July 3, 4, 5, 12, 14, 18, and 23, 2024. The Center appointed John Swinson as the sole panelist in this matter on July 26, 2024. 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 Background This Complaint concerns 37 disputed domain names that were registered on various dates between August 2023 and April 2024.
page 3 The Complainant was founded in 2012 and operates a popular online graphic design platform. Users of the Complainant’s services have many images and templates to choose from when creating graphic designs. The Complainant’s services are offered exclusively online and are available globally. The Complainant currently has more than 130 million active users per month in 190 countries and offers its platform in approximately 100 languages. The Complainant owns a portfolio of trademark registrations including Australian trademark registration number 1483138 for CANVA that has a registration date of March 29, 2012. In spite of the several email communications sent by the Respondents, mostly informing their wish to settle the dispute, the Respondents did not file a formal response, so little information is known about the Respondents. At the time of filing the Complaint the following disputed domain names did not resolve to an active website: , , and , (“the Inactive Domains”). At one time in the past, displayed the same content as the Active Domain Names as discussed below. The website at the disputed domain name displays a Registrar-generated message that states “Whois verification is pending” and that this disputed domain name has been suspended. The website at the disputed domain name displays a message that states “A commitment to innovation and sustainability”. All of the other disputed domain names (“the Active Domains”) have been used for websites purporting to offer Canva templates for sale or that prompt Internet users to sign up for “Mastery Success Resources” which includes Canva Templates material, and which included copyright notices referring to “Ubaidullah Jaafar” and/or “Mastery Success Sdn Bhd”. At the present time, many of the disputed domain names do not resolve to an active website. Some of the disputed domain names redirect to a webpage located at that is titled “Mastery Success Resources” and appears to be a log-in or registration page. At least one of the disputed domain names is redirected to a webpage in German at . 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the Complainant currently has more than 130 million active users per month with customers across 190 countries, and as a result, the Complainant’s services have achieved significant reputation and acclaim. The Respondents have not been licensed by the Complainant to use domain names that feature its CANVA mark and, to the best of the Complainant’s knowledge, the Respondents do not have trademark rights in “canva”. There is no plausible reason for the registration of the disputed domain names other than to take advantage of the goodwill and valuable reputation attached to the CANVA brand, as the Respondents have no connection or affiliation with the Complainant and have not received any license or consent to use the CANVA mark in any way. The Complainant submits that the Respondents have clearly registered the disputed domain names to target the Complainant’s brand intentionally. It is inconceivable to believe the Respondents have chosen to register the disputed domain names for any reason other than to target the Complainant’s trademark.
page 4 B. Respondents The Respondents did not file a formal reply to the Complainant’s contentions. The Respondents have sent multiple communications to the Center, which generally referred to the Complainant’s trademark rights and offered to resolve this dispute in various ways or stated that the website at a disputed domain name has been taken down. The Respondents have not substantially contested the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the 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. Each disputed domain name must be considered separately. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. The Complainant submits that the Respondents are controlled by a common entity, who is a person named “Ubaidullah Jaafar” and who calls himself “UJ”. Twenty-seven of the disputed domain names contain identical content or have, in the past, hosted identical content. This content predominantly displays the caption “Dapatkan 7970+ Template Canva & Powerpoint Edit Mudah tanpa Edit Dari Awal” on a purple background. These sites all allegedly sell Canva templates, have identical TikTok disclaimers and identical Terms and Conditions at the bottom of the webpage, and a common copyright notice that states “© Copyright 2022. Design by Ubaidullah Jaafar | Mastery Success Sdn Bhd. All Rights Reserved”. When users click the copyright notice link, they are redirected to Ubaidullah Jaafar’s website located at
page 5 . This website is not in English but appears to state that Ubaidullah Jaafar is the managing director of “Mastery Success Sdn Bhd”. The website states that “UJ” has been involved in digital advertising since 2015. As regards common control, the Panel notes that multiple disputed domain names are or were hosted in the same dedicated IP servers. For example, the disputed domain names , and , although they display different content and do not share a common creation date, share a common dedicated IP server. Moreover, seven disputed domain names currently redirect or in the past redirected to a webpage located at that is titled “Mastery Success Resources” and appears to be controlled by Ubaidullah Jaafar or Mastery Success Sdn Bhd. The site purports to give Internet users access to “Canva Premium’, the same type of content as found on the twenty-seven disputed domain names referred to above. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within each of the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, for example, “awesome”, “success”, “flash”, “art”, “expert”, “marketing”, “pearl”, “mastery”, “ready” and “template” and others) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 6 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. As to paragraph 4(c)(i) of the Policy, and as further discussed below in Section 6C, the Panel considers that the Respondent has used the Active Domains to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s goods and services. Such use of the Active Domains could not be said to be bona fide. If and insofar as the Respondent is using the Active Domains to resell the Complainant’s goods or services, the consensus view of UDRP panels is that to establish a bona fide offering of goods or services in such circumstances, a respondent must comply with certain conditions (the “Oki Data requirements”). WIPO Overview 3.0, section 2.8. In this case, to the extent that the Respondent is reselling the Complainant’s goods or services, the Panel considers that the Respondent has failed to accurately and prominently disclose the Respondent’s relationship with the trademark holder. The Respondent also appears to be attempting to “corner the market” in domain names that reflect the Complainant’s trademark. Accordingly, the Oki Data requirements are not met in the present case. See also Canva Pty Ltd v. Canva Sifu et. el., WIPO Case No. D2023-2921. Some of the websites at the disputed domain names are now inactive or resolve registrar-generated pages. This does not constitute a bona fide offering of goods or services for the purposes of the second element of the Policy. There is no evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy are relevant in the circumstances of this case. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel considers that the record of this case reflects that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. The Respondent’s use of the Active Domains to sell Canva templates is evidence of bad faith use. This is particularly so where the Respondent presumably attracts customers by implying an affiliation with the Complainant and by selling the Complainant’s products or similar products.. As regards the Inactive Domains, 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. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel considers the doctrine of passive holding applies in respect of the Inactive Domains. The Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the Inactive Domains, and finds that in the circumstances of this case the passive holding of the Inactive Domains does not prevent a finding of bad faith under the Policy.
page 7 The Respondent was unsuccessful in a prior case under the Policy (Canva Pty Ltd v. Canva Sifu et. el., WIPO Case No. D2023-2921, complaint notified to the Respondent on September 11, 2023, and decided on February 27, 2024). The Respondent continued its bad faith conduct during the pendency of that prior case by registering some of the disputed domain names in this case after September 11, 2023, and even registered more disputed domain names after the Respondent received an adverse decision in the prior case on February 27, 2024. The conduct of the Respondent in the present case is very similar to the Respondent’s bad faith conduct in that prior case. The Panel finds that the Complainant has established the third element 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /John Swinson/ John Swinson Sole Panelist Date: August 5, 2024
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