WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Thanh Le

Case No. D2021-4118

1. The Parties

The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.

The Respondent is Thanh Le, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <canvavina.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 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 13, 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 December 14, 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 December 15, 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 December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2022.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 18, 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 Background

The Complainant is an online graphic design platform founded in 2012, which proposes thousands of images and templates to choose from when creating graphic designs.

The Complainant offers services from its main website accessible under the domain name <canva.com>. Its online platform is available in approximately 100 languages, including Vietnamese.

The Complainant is the owner of several registered trademarks, including:

- The Australian trademark CANVA Number 1483138 registered on March 29, 2012, in class 9;

- The United States of America trademark CANVA Number 4316655 registered on April 9, 2013 in class 42;

- The International trademark CANVA Number 1204604 registered on October 1, 2013 in class 9;

- The International trademark CANVA Number 1429641 registered on March 16, 2018 in class 9, 40 and 42.

The Complainant also owns several domain names, under both generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”) extensions.

The disputed domain name <canvavina.com> was registered on August 5, 2021 and resolves to an active website which purports to sell packages in connection with the Complainant’s CANVA Trademark. The footer text at the bottom of this website indicates “CANVAVINA – ĐƠN VỊ PHÂN PHỐI TÀI KHOẢN CANVA PRO CHẤT LƯỢNG TẠI VIỆT NAM”, meaning “CANVAVINA – QUALITY CANVA PRO ACCOUNT DISTRIBUTOR IN VIETNAM”.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain name is confusingly similar to its prior trademarks, since it wholly incorporates the CANVA trademark, with addition of the term “vina”, which the Complainant notes is a synonym of “Viet”, often used in Vietnamese company names. The Complainant also requests that the Panel disregard the gTLD “.com”, as this is a standard registration requirement.

Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has not registered any trademark for CANVA or CANVAVINA and the Respondent has not been licensed by the Complainant to use domain names that feature its CANVA trademark. The Complainant also contends that none of the circumstances listed at paragraph 4(c) of the Policy apply in this case.

Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

The Complainant states that the CANVA trademark predates the registration of the disputed domain name by more than nine years and can be found easily on public trademark databases. Additionally, all top Google search results for the CANVA term pertain to the Complainant’s offering. Lastly, “canvavina” has no meaning in both English and Vietnamese so that the decision to register the combination of the CANVA trademark and the term “vina” which is the synonym of “Viet” indicates that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.

The Complainant also asserts that the Respondent used the disputed domain name in bad faith prior to notice of the Complaint and submits that it has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CANVA trademark, since the Respondent creates a “CANVAVINA.COM” logo that is similar in color and font to the Complainant’s logo, and claims to offer the Complainant’s CANVA professional services for lower prices, and inserts in the website’s footer the mention “CANVAVINA – ĐƠN VỊ PHÂN PHỐI TÀI KHOẢN CANVA PRO CHẤT LƯỢNG TẠI VIỆT NAM”, meaning “CANVAVINA – QUALITY CANVA PRO ACCOUNT DISTRIBUTOR IN VIETNAM”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right;

(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.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the CANVA trademark.

Then, the Panel wishes to remind that the first element of the UDRP serves essentially 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.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel notices that it is composed of (i) the CANVA trademark in its entirety, (ii) the term “vina” and (iii) the gTLD “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

In this case, the Panel notes that the term “vina” can be considered as a geographical term since it is the synonym of “Viet” for Vietnamese or Vietnam Nation. Its addition to the Complainant’s CANVA trademark does not prevent a finding of confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while 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 prima facie 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 (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Indeed, the Respondent has not been licensed by the Complainant to use domain names that feature its CANVA Trademark. Moreover, it appears that the Respondent is not using or has prepared to use the disputed domain name with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Even if the Respondent was to be considered a distributor (as the website accessible under the disputed domain name claims), the website is designed to create a false impression of commercial affiliation with the Complainant in order to claim to offer the Complainant’s services at a discounted price, whereas the Respondent is not affiliated with nor authorized by the Complainant to advertise services in connection with the CANVA trademark. In addition, the Panel finds that the composition of the disputed domain name along with its use creates a risk of implied affiliation with the Complainant’s trademark.

Finally, the Respondent did not reply to the Complainant’s contentions.

Therefore, the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, 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.

According to prior UDRP decisions, particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof (see section 3.2.1 of the WIPO Overview 3.0).

First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name. Moreover, top Google search results for the “canva” term pertain to the Complainant’s offering.

Thus, the Panel finds that the Respondent knew, or should have known, when registering the disputed domain name, that it would be confusingly similar to the Complainant’s trademark.

In addition, the Panel finds that the Respondent intentionally registered the disputed domain name in order to create confusion with the Complainant’s CANVA trademark, especially since the Respondent added the term “vina” to it, which can be considered a geographical term, and confirms the registration in bad faith (as it can be easily perceived as the Complainant’s website for the Vietnamese market).

The Panel also finds that the Complainant has demonstrated a bad faith use of the disputed domain name, as the latter leads to an active website on which:

(i) the Respondent has inserted a logo “CANVAVINA.COM” in a color and font similar to the Complainant’s logo;

(ii) the Respondent has inserted a footnote claiming to be a distributor for the Complainant;

(ii) the Respondent claims to sell the Complainant’s Canva services at a discounted price, even though the Respondent is not affiliated with nor authorized by the Complainant to sell or distribute the Complainant’s services.

This use of the disputed domain name constitutes an intentional attempt of the Respondent to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s CANVA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which is a scenario constituting evidence of the Respondent’s bad faith in using the disputed domain name.

Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii).

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 <canvavina.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: January 28, 2022