WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Dang Nguyen

Case No. D2021-1169

1. The Parties

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

Respondent is Dang Nguyen, Viet Nam.

2. The Domain Name and Registrar

The Disputed Domain Name <canvapro.design> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 20, 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 Complainant on April 22, 2021, 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 April 23, 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 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. Respondent did not submit any response.

The Center appointed Richard W. Page as the sole panelist in this matter on June 4, 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.

4. Factual Background

Complainant is an online graphic design platform founded in 2012 and was founded in Australia by Melanie Perkins, Cliff Obrecht and Cameron Adams. Users of Complainant’s services have thousands of images and templates to choose from when creating graphic designs. The online platform is easy to-use, intuitive and utilizes a “drag and drop methodology”. As a result, Complainant’s services have achieved significant reputation and acclaim. Complainant uses its main site “www.canva.com” to offer its services.

Complainant offers its services, as a basic package, for free. Complainant offers a paid version named “Canva Pro”, which has more features and design capabilities. The Canva Pro service offering is a
well-known version of Complainant’s services, aimed predominately at professionals or graphic design teams within companies. Global organizations such as Anytime Fitness, Huff Post, Greenpeace and Duke University, among many others, use Complainant’s Canva Pro services.

The CANVA brand is well-known around the world. Complainant’s services are offered exclusively online, which is inherently global. Within its first year, Complainant had 750,000 users and raised USD 3 million in seed funding. It also received recognition for having famed venture capitalist Guy Kawasaki join the company in 2014.

Complainant has expanded internationally, particularly in the Asia-Pacific region, with offices in Beijing and Manila. The CANVA website is now available in Vietnamese and Complainant’s business operations have expanded into the region.

Furthermore, Complainant launched its app for the iPad, which grew access to CANVA services. Complainant’s app is now available on phone devices. Additionally, Complainant’s business has grown through acquisitions of Zeetings, Pexels and Pixabay. Complainant has 977 employees spread across offices in Sydney, Manila and Beijing. As of 2019, Complainant was valued at USD 3.2 billion and has 20 million users across 190 countries.

Complainant also offers a “design school” which provides tutorial, courses and events. The design school helps businesses and graphic designers perfect their work, offering courses such as “Social media mastery”, “Graphic Design Basics” and “Presentations to impress”. Complainant also maintains blogs on design, marketing, branding and photography.

Within the field of graphic design, Complainant has achieved considerable acclaim. It is frequently featured in third-party lists collating the best online graphic design tools available.

The services offered under the CANVA online tool relate to a variety of uses. Online users can create leaflets, social media posts, and even website designs. Complainant offers many website templates to its users, featuring model site designs. Users can publish their designs as interactive websites.

To date, Complainant holds several registered trademarks for the trademark CANVA (the “CANVA Mark”):

United States Registration No. 4316655 registered on April 9, 2013, in Class 42;
Australia Registration No. 1483138 registered on September 9, 2013, in Class 9; and
International Registration No. 1204604 registered on October 1, 2013 in Class 9.

Complainant has also established a social media presence and uses its CANVA Mark to promote its services under this name, in particular:

Facebook: 1,4 million “likes” – www.facebook.com/canva/;
Twitter: 133,900 “followers” – www.twitter.com/canva;
Instagram: 402,000 “followers” – “www/Instagram.com/canva/”.

The Disputed Domain Name was registered on July 13, 2020 and resolves to a website purporting to sell log-in credentials to subscriptions of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns trademark rights in the CANVA Mark and that its registrations constitute prima facie evidence of such rights.

Complainant further contends that the Disputed domain Name is confusingly similar to the CANVA Mark. Complainant further contends that the entirety of the CANVA Mark is contained in the Disputed Domain Name with the addition of the descriptive term “pro” which does not negate the confusing similarity. Complainant notes that it actually offers a package named “Canva Pro,” which is an advanced paid-for version of Complainant’s services, aimed at corporate clients.

Complainant further contends that the generic Top-Level Domain (“gTLD”) “.design” should be disregarded as a necessary element in a domain name.

Complainant asserts that it has satisfied the elements of paragraph 4(a)(i) of the Policy.

Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.

Complainant further asserts that there is no evidence that Respondent retains any unregistered trademark rights in the term CANVA on any other term used in the Disputed Domain Name. Neither has Respondent received any license for Complainant to use the CANVA Mark in a domain name or in any other way. Complainant further asserts that Respondent can demonstrate none of the circumstances where Respondent can prove rights or legitimate interests in the Disputed Domain Name.

Complainant submits that Respondent is using the Disputed Domain Name to host a website advertising and propagating services related to those offered by Complainant. Using the Disputed Domain Name in a manner competitive with Complainant is not a bona fide use.

Complainant further submits Respondent is purporting to sell log-in credentials to its subscriptions of Complainant’s services without authorizations and in breach of Complainant’s terms of use. Complainant’s official log is used numerous times through the website. Reviews of official CANVA services have been copied and placed onto Respondent’s website to insinuate legitimacy, some of which have been edited to make it appear that they refer to Respondent’s offering. When users click on the “about” link, they are directed to a website stating: “We represent the legal interests of Canva Pty Limited (“Canva”) the owner and operator of the Canva software as a service…” Respondent is not making a bona fide commercial use of the Disputed Domain Name. Respondent cannot claim a bona fide, legitimate noncommercial undertaking or fair use where its service offering is not genuine or is attained fraudulently.

Complainant further submits that Respondent’s purported offering of login credentials to CANVA subscriptions is contrary to Complainant’s terms of use. The claimed use of the “Education version” of CANVA services is prima facie fraudulent, and induces potential Internet users to act in breach of the terms of use.

Complainant further submits that the Disputed Domain Name itself suggests affiliation with Complainant. The Disputed Domain Name replicated, identically, the name of the widely-use version of CANVA services, namely “Canva Pro”. Complainant uses <canvapro.com> to direct online users to its own services. Online users would believe <canvapro.design> to be owned by Complainant. Complainant alleges that Respondent is not commonly known by the distinctive term “canva” or by “Canva Pro” nor is offering any bona fide or legitimate goods or services identified by the term “canva” or “Canva Pro”.

Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

Complainant further alleges that its earliest trademark registration predates the creation date of the Disputed Domain Name by seven years. Substantial goodwill has accrued since Complainant’s establishment in 2012. During which time, the CANVA name and its Canva Pro offering, have become synonymous with online graphic design tools.

Complainant further alleges that Respondent has not replied to cease and desist letters sent on Complainant’s behalf, which constitutes further evidence that Respondent is knowingly acting in bad faith.

Complainant further alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s CANVA Mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the CANVA Mark in which Complainant has rights; and
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the trademarks CANVA Mark.

Section 1.2.1 of the WIPO Overview 3.0 states that registration of the CANVA Mark is prima facie evidence of Complainant having enforceable rights.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the CANVA Mark pursuant to paragraph 4(a)(i) of the Policy.

Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top-Level Domains (“gTLDs”) such as “.design” may be disregarded for purposes of assessing confusing similarity.

Complainant contends that the entirety of the CANVA Mark is contained in the Disputed Domain Name with the addition of the term “pro” which does not negate the confusing similarity. Complainant notes that it actually offers a package named “Canva Pro,” which is an advanced paid-for version of Complainant’s services, aimed at corporate clients. Complainant further contends that the gTLD “.design” should be disregarded as a necessary element in a domain name.

Respondent has not contested Complainant’s registrations of the CANVA Mark, nor the allegations of confusing similarity.

The Panel finds that Complainant has shown the required elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the CANVA Mark.

Complainant asserts that there is no evidence that Respondent retains any unregistered trademark rights in the term CANVA or on any other term used in the Disputed Domain Name. Neither has Respondent received any license for Complainant to use the CANVA Mark in a domain name or in any other way. Complainant further asserts that Respondent can demonstrate none of the circumstances where Respondent can prove rights or legitimate interests in the Disputed Domain Name.

Complainant further assets Respondent is purporting to sell login credentials to its subscriptions of Complainant’s services without authorizations and in breach of Complainant’s terms of use. Complainant’s official log is used numerous times through the website. Reviews of official CANVA services have been copied and placed onto Respondent’s website to insinuate legitimacy, some of which have been edited to make it appear that they refer to Respondent’s offering. When Internet users click on the “About” link on the website at the Disputed Domain Name, they are redirected to a website stating: “We represent the legal interests of Canva Pty Limited (“Canva”) the owner and operator of the Canva software as a service…” Respondent is not making a bona fide commercial use of the Disputed Domain Name. Respondent cannot claim a bona fide, legitimate noncommercial undertaking or fair use where its service offering is not genuine or is attained fraudulently.

Complainant further assets that Respondent is not commonly known by the distinctive term “Canva” or by “Canva Pro” nor is offering any bona fide or legitimate goods or services identified by the term “Canva” or “Canva Pro”.

The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name and Respondent has not contested these allegations.

The Panel further finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the CANVA Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the CANVA Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the CANVA Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant alleges that its earliest trademark registration predates the creation date of the Disputed Domain Name by seven years. Substantial goodwill has accrued since Complainant’s establishment in 2012. During which time, the “Canva” name and its Canva Pro offering, have become synonymous with online graphic design tools.

Complainant further alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s CANVA Mark.

Respondent has not contested these allegations.

The Panel finds that Complainant has satisfied the elements of paragraphs 4(b)(iv), and the Complainant has satisfied the requirements of 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 Name <canvapro.design> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: June 16, 2021