WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd v. Enzo Alfaya
Case No. D2021-1426
1. The Parties
The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Enzo Alfaya, Brazil.
2. The Domain Name and Registrar
The disputed domain name <kitcanvaexpress.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021.
The Center appointed Lilleengen, Mathias as the sole panelist in this matter on June 11, 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
The Complainant is an online graphic design platform founded in 2012. The Complainant has currently some 30 million active users per month with customers in 190 countries. The Complainant offers services from “www.canva.com”. The Complainant’s online platform is available to users in approximately 100 languages, through country-specific sites, such as “www.canva.com/pt_br/” for Brazil where the Respondent is located. As part of the services, the Complainant offers “brand kits” to support unified image of brand identity. The Complainant has a social media presence, in particular on Facebook, Twitter and Instagram.
The Complainant owns trademark registrations in the trademark CANVA in several countries, for example United States of America trademark registration number 4316655, registered on April 9, 2013.
According to the Registrar, the Domain Name was registered on February 15, 2021. The Complainant has provided evidence showing that the Domain Name resolves to a website in the Portuguese language, which seems to offer services similar to those of the Complainant, and uses the Complainant’s logo without permission.
5. Parties’ Contentions
The Complainant provides evidence of its trademark registrations. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. It incorporates the Complainant’s trademark, and only adds the terms “kit” and “express”, which are insufficient to prevent confusing similarity under the first element of the Policy.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name and there is no evidence that the Respondent holds any registered or unregistered rights. The Respondent has not made any bona fide offering as the Respondent’s use of the Domain Name to resolve to a website that utilizes the Complainant’s logo, does not qualify as a bona fide offering of goods.
The Complainant argues that the Respondent registered the Domain Name with knowledge of the Complainant’s trademark, as the trademark registrations predate the registration of the Domain Name by at least 9 years. Moreover, the Complainant documents that the Respondent has not replied to the Complainant’s cease and desist letter. The Complainant argues that the Respondent has attracted for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark CANVA. The test for confusing similarity involves a comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark, with the addition “kit” and “express”. The additions do not prevent a finding of confusing similarity. For the purpose of assessing the confusing similarity test under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”), in this case “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of the Complainant’s trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name is clearly not bona fide.
The nature of the Domain Name, comprising the Complainant’s trademark and related terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the case file, the Panel finds that the Respondent has registered and used the Domain Name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. The Respondent has not provided any evidence of good-faith use, and the Complainant’s trademark is registered from long before the Respondent registered the Domain Name. The Respondent’s uses the Domain Name to take advantage of the reputation of the Complainant’s trademark.
Moreover, the Respondent has not replied to the Complainant’s contentions, which under the circumstances further points to bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kitcanvaexpress.com> be transferred to the Complainant.
Date: June 21, 2021