The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Jeffrey Walsh, United States of America (“United States”).
The disputed domain name <canvaondemand.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 28, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 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 April 29, 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 7, 2021. 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.
The Complainant is an online graphic design platform founded in Australia in 2012 which has achieved significant reputation and acclaim through the use of an intuitive ‘drag-and-drop’ methodology. The Complainant offers its services either as a basic package which is free of charge or through a paid version named “Canva Pro” which has more features and design capabilities. The Complainant’s CANVA brand is well-known around the world and its main site “www.canva.com” consistently receives over 200 million visits per month according to third party web statistics. In 2019, the Complainant was valued at USD 3.2 billion and had 20 million users across 190 countries.
The Complainant is the owner of several trade mark registrations for the CANVA mark in various jurisdictions, including, inter alia, the CANVA trade mark (Reg. No. 4316655) registered in the United States on April 9, 2013; the CANVA trade mark (Reg. No. 1483138) registered in Australia on September 9, 2013 and the International CANVA trade mark (Reg. No. 1204604) registered on October 1, 2013.
The Disputed Domain Name was registered by the Respondent on January 13, 2019. The Disputed Domain Name redirects visitors to different third-party websites, including the Complainant’s official website.
The Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s CANVA trade mark. The Disputed Domain Name incorporates the Complainant’s CANVA trade mark in its entirety with the addition of the generic term “on demand”, which does not sufficiently distinguish the Disputed Domain Name from the Complainant’s CANVA trade mark.
(b) The Respondent does not have any registered or unregistered trade mark rights to the term “CANVA” or any other terms used in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its CANVA trade mark. The Respondent is not commonly known by the Disputed Domain Name. Furthermore, the Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services as Disputed Domain Name redirects users to either fraudulent third-party websites or the Complainant’s official website.
(c) The Complainant’s earliest trade mark registration predates the registration date of the Disputed Domain Name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CANVA trade mark. The use of the Disputed Domain Name by the Respondent to redirect online users to fraudulent third-party websites and the Complainant’s official website is an indication of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the CANVA trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s CANVA trade mark in its entirety with the addition of the term “on demand”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.
The mere addition of the term “on demand” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s CANVA trade mark.
As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CANVA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel finds that the Complainant has not authorised the Respondent to use the CANVA trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the CANVA trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Disputed Domain Name has been used to redirect visitors to various websites, including websites that contain fake news articles that promote fraudulent financial services and websites that contain pop-up boxes for users to download potentially harmful software. Therefore, the Panel finds that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was not in connection with any bona fide offering of goods or services.
The Disputed Domain Name also occasionally redirects users to the Complainant’s official website. Accordingly, the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate non-commercial or fair use as such use of the Disputed Domain Name gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors, and tarnishing the Complainant’s CANVA trade mark.
In addition, there is no evidence to prove that the Respondent has any trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The Complainant’s CANVA trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “CANVA” are the Complainant’s official website and social media sites, and several third party websites making references to the Complainant’s products and services. Given that the Disputed Domain Name was registered by the Respondent long after the Complainant had acquired registered trade mark rights in its CANVA trade mark, the Respondent must have been aware of the Complainant and its rights in the CANVA trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s CANVA trade mark in its entirety also creates a presumption of bad faith.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:
(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainant’s CANVA trade mark and redirects visitors to fraudulent third-party websites as well as the Complainant’s official website. Such use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <canvaondemand.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: June 21, 2021