WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd v. Domain Admin / John Obeye; Hulmiho Ukolen, Poste restante; Pavol Icik, Main Post Office 1
Case No. D2020-1207
1. The Parties
The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondents are Domain Admin / John Obeye, Czech Republic ; Hulmiho Ukolen, Poste restante, Finland ; Pavol Icik, Main Post Office 1, Slovakia.
2. The Domain Names and Registrar
The disputed domain names <canvaa.com>, <canvca.com> and <wwwcanva.com> are registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2020 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 May 15, 2020.
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 Respondents of the Complaint, and the proceedings commenced on May 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 11, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on June 17, 2020. 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 provides an online graphic design platform and owns a number of trademark registrations for the mark CANVA in multiple jurisdictions, including United States of America Registration No. 4316655, registered on April 9, 2013.
The Respondents registered the disputed domain names on the following dates: <canvaa.com> - November 22, 2014; <canvca.com> - April 11, 2017; and <wwwcanva.com> - November 20, 2014. The Respondents have used the disputed domain names to redirect users to various websites. At time of filing the Complain, <canvaa.com> redirects to a website that has been used to display fake news articles that could deceive online users into joining a cryptocurrency scheme. The disputed domain name <canvca.com> has also been used for this purpose, and has also been used to redirect to a “stop-bot” website, that tries to install a browser extension on the user’s Internet browser. The disputed domain name <wwwcanva.com> is used for a pay-per-click advertising page that features some links directly related to the Complainant’s brand and services.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s registered trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of Multiple Respondents
The Complainant requests that the claims made against the three Respondents in this matter be consolidated into one matter. The Panel grants this request. A complainant in a UDRP dispute may submit a consolidated complaint against multiple respondents. According to the Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple Respondents, the Panel should look at whether “(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.
In this case, the Complainant submits that the disputed domain names are subject to common control, noting that: (1) all three disputed domain names target the Complainant’s brand in similar ways, namely, by being domain names that are specifically designed to take advantage of situations in which users mistype the domain name of the Complainant’s legitimate website; (2) all three disputed domain names are registered to the same registrar and use the same privacy protection service; (3) all three disputed domain names use the same name servers; (4) previous UDRP decisions have consolidated complaints against at least two of the listed Respondents; (5) previous UDRP decisions have shown the propensity for the Respondents to use alias names; (6) all three disputed domain names have, at some point, listed the information of one particular individual as its owner and there has been no change in creation date, name servers or registrar since those historical WhoIs records were obtained, suggesting no true transfer has taken place; and (7) the Respondents have not denied common ownership, despite a cease and desist letter being sent. On this last point, the Panel notes additionally that the Respondents have not responded in these proceedings to the Complainant’s assertions in favor of consolidation. The Panel finds these circumstances to be appropriate for consolidation.
B. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain names are identical or confusingly similar to that mark. The Panel finds the Complainant has established rights in the CANVA mark based on the Complainant’s use of the CANVA mark as well as trademark registrations in various jurisdictions around the world.
The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s mark. The disputed domain names either incorporate the entirety of the CANVA mark or a near-equivalent.
When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is of no legal significance from the standpoint of comparing the disputed domain names to the Complainant’s CANVA mark, because use of a gTLD is required of domain name registrants and “.com” does not serve to identify a specific enterprise as a source of goods or services. SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
Similarly, UDRP panels have consistently held that “a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate rights”. Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317. Such insignificant modifications to trademarks are commonly referred to as “typosquatting”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See, Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive”. Dell Computer Corporation v. Clinical Evaluations,
WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd.,
WIPO Case No. D2000-0455 (<addvil.com> held confusingly similar to ADVIL).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondents lack rights or legitimate interests in the disputed domain names, and if the Respondents fail to rebut that prima facie showing.
In this case, the Complainant has made that showing, and the Respondents did not come forward with any of their own evidence. The Panel finds that (a) the Respondents’ use of the disputed domain names to display fake news articles that could deceive online users into joining a cryptocurrency scheme, and
pay-per-click links are not bona fide offerings of goods or services, (b) the Respondents have not been commonly known by the disputed domain names, and (c) the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks.
For these reasons, the Panel finds that the Complainant has succeeded on this second element of the Policy.
D. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain names were registered and are being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [respondent’s] website or location”.
Because the Complainant’s CANVA mark is well known, and because it has been in use and registered since before the registration of all three of the disputed domain names, it is more likely than not that that the Respondents were aware of the mark when they registered the disputed domain names. The Panel finds, on these facts, that the Respondents targeted the Complainant and its CANVA mark when they registered the disputed domain names. These facts show bad faith registration of the disputed domain names. Bad faith use is clear from the Respondents’ activities of using the disputed domain names to establish websites that show fake news that could deceive users, and which try to install software on a user’s computer. Bad faith use is also established by the display of pay-per-click links. The Complainant has successfully established the third UDRP element.
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 names <canvaa.com>, <canvca.com> and <wwwcanva.com> be transferred to the Complainant.
Evan D. Brown
Date: July 1, 2020