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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Domain Administrator

Case No. D2020-1208

1. The Parties

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

Respondent is Domain Administrator, Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names <camnva.com>, <mycanva.com>, <vcanva.com> (“Disputed Domain Names”) are registered with Above.com, Pty Ltd. (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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 15, 2020 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 May 19, 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 Respondent of the Complaint, and the proceedings commenced on May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 12, 2020.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 23, 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

Founded in 2012, Complainant is an online graphic design platform with over 20 million users in 190 countries. Since its inception, Complainant has used the trademark CANVA in connection with its graphic design services. Complainant owns multiple trademark registrations for its CANVA mark, including International Registration No. 1204604, registered on October 1, 2013; United States of America Registration No. 4316655, registered on April 9, 2013; and Australian Registration No. 1483138, registered on September 9, 2013. Complainant has received significant media recognition due to a number of acquisitions and notable partnerships. In 2019, Complainant was valued at approximately USD 3.2 billion.

Respondent registered the Disputed Domain Names <camnva.com> and <mycanva.com> on November 30, 2016 and <vcanva.com> on March 30, 2016. The Disputed Domain Names <camnva.com> and <vcanva.com> redirect visitors to websites promoting cryptocurrency schemes and other third-party websites. The Disputed Domain Name <mycanva.com> is used in connection with a pay-per-click advertising page featuring links related to Complainant’s CANVA mark and photo printing.

On April 15, 2020, Complainant sent Respondent a cease-and-desist letter via email, demanding that Respondent transfer the Disputed Domain Names to Complainant. Respondent replied to the letter with an offer to sell the Disputed Domain Names for USD 250 each.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are confusingly similar to Complainant’s CANVA trademark. According to Complainant, the minor changes to Complainant’s mark – namely, the addition of the letters “m” and “v” and the addition of the term “my” – are examples of typosquatting and evince Respondent’s intent to be misleading and deceptive.

Complainant further contends that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Names. To Complainant’s knowledge, Respondent is not known by the Disputed Domain Names and lacks trademark rights in the same. Complainant asserts that it has not licensed or authorized Respondent’s use of the CANVA trademark in the Disputed Domain Names. Complainant also asserts that there is no evidence Respondent is using the Disputed Domain Names in connection with a bona fide offering of goods or services.

As to Respondent’s bad faith, Complainant contends that Respondent registered the Disputed Domain Names to take commercial advantage of Complainant’s CANVA trademark. As evidence of Respondent’s bad faith registration, Complainant asserts that Respondent engaged in typosquatting and targeted Complainant’s mark with the registration of the Disputed Domain Names. Further, Complainant asserts that Respondent has used the Disputed Domain Names in bad faith by redirecting the Disputed Domain Names to fraudulent websites and a pay-per-click advertising page that targets Complainant’s sector.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated its rights in the CANVA trademark by way of its trademark registrations. The Disputed Domain Names <mycanva.com> and <vcanva.com> each wholly incorporate Complainant’s CANVA mark and are thus confusingly similar to Complainant’s mark. The addition of the term “my” or the letter “v” does not obviate the confusing similarity. The Disputed Domain Name <camnva.com> adds an “m” in the middle of the Disputed Domain Name, but this is plainly intended to exploit typo mistakes and is still confusingly similar.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Noting the facts and arguments set out above, Complainant has established a prima facie case for Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Names, which Respondent has not rebutted. Complainant has not authorized or licensed Respondent’s use of the CANVA trademark in the Disputed Domain Names. Additionally, there is no evidence that Respondent is making a bona fide offering of goods or services through the Disputed Domain Names. Respondent’s use of the Disputed Domain Names <camnva.com> and <vcanva.com> to redirect users to other websites does not confer upon Respondent rights or legitimate interests. Similarly, Respondent’s use of the Disputed Domain Name <mycanva.com> in connection with a pay-per-click advertising webpage, targeting Complainant, does not confer rights or legitimate interests either.

Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered the Disputed Domain Names in bad faith. Complainant’s CANVA mark was widely known at the time Respondent registered the Disputed Domain Names. The term “canva” has no ordinary meaning that might explain why Respondent registered variations of it for any reason other than an attempt to exploit interest in Complainant’s trademarks. And Respondent has offered no excuse. Respondent’s registration of the Disputed Domain Names demonstrates Respondent’s intent to target Complainant’s mark. For instance, the Disputed Domain Names <camnva.com> and <vcanva.com> consist of predictable misspellings of Complainant’s CANVA mark. Additionally, the Disputed Domain Name <mycanva.com> combines Complainant’s mark with the dictionary term “my”, which further indicates Respondent’s familiarity with Complainant’s mark.

The Panel also finds that Respondent is using the Disputed Domain Names in bad faith. Respondent has used the Disputed Domain Names <camnva.com> and <vcanva.com> to redirect Internet visitors to websites perpetuating cryptocurrency and other fraudulent schemes. Respondent has similarly used the Disputed Domain Name <mycanva.com> to redirect Internet visitors to a pay-per-click parking page featuring links relevant to Complainant’s business. By using the Disputed Domain Names in these manners, Respondent has intentionally created a likelihood of confusion with Complainant’s trademark for Respondent’s financial gain.

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 Names, <camnva.com>, <mycanva.com>, and <vcanva.com> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist
Date: July 7, 2020

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