WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Radha Rani, Mahu

Case No. D2021-2303

1. The Parties

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

Respondent is Radha Rani, Mahu, India.

2. The Domain Name and Registrar

The disputed domain name <canva.courses> (the “Domain Name”) is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 26, 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 July 26, 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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Response was filed with the Center on August 18, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 16, 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, Canva Pty Ltd, is an online graphic design platform founded in 2012. Because the platform is easy-to-use, Complainant’s services have achieved significant reputation and acclaim. Complainant’s services are global and offered exclusively online at “www.canva.com”.

Third-party web traffic statistics show that Complainant’s website consistently receives over 200 million Internet visits per month. Its services are also available on an app for the iPad, which grew use of Complainant’s services. 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, “CANVA” was valued at USD 3.2 billion and has 20 million users across 190 countries.

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

Complainant holds several registered trademarks for “CANVA”: U.S. Registration No. 4,316,655 (registered on April 9, 2013); Australia Registration No. 1,483,138 (registered on September 9, 2013), and International Registration No. 1,204,604 (registered on January 10, 2013) (collectively, the “CANVA Mark” or the “Mark”). Complainant has an established social media presence (Facebook 1.5 million “likes”; Twitter 161.7k “followers”; Instagram 690k “followers”).

The Domain Name was registered on April 11, 2021. It resolved to a website with a landing page that was headed by the Domain Name <canva.courses>. Underneath were a series of five bright blue rectangles with the following words appearing -- one word in each of the rectangles: Canva; Canva Art; Photo Canvas; Critcut; and Art Prints. The rectangles had an “>” (arrow/chevron) at the end suggesting a link. Indeed, at the bottom of the page it states in pertinent part: “The Sponsored Listings displayed above are served automatically by a third party.” If the public clicks on the first link to “Canva” the public is taken to an ad stating: “Canva Design – Online Design Made Easy.” There is also a link to Complainant’s website. If one clicks on the second link, the public is taken to an ad for “Canvas Art Prints & Original Wall Décor | Enid Hutt Gallery Blog” and the website of Enid Hutt. The other links were to businesses selling vector graphics, photo editing, and fonts/graphics software.

There was also a webpage on the website that stated: “CANVA.COURSES. This domain is for sale! $1,000.00.” This verbiage was followed by a box to click on with the words “Buy Now!”

On June 4, 2021, Complainant’s representative sent Respondent a cease and desist letter through the Registrar’s website. Complainant did not receive a response from Respondent. Complainant sent Respondent a follow-up cease and desist letter again through the registrar’s website and did not receive a response.

5. Parties’ Contentions

A. Complainant

Complainant holds rights in the “CANVA” Mark by virtue of its trademark registrations. Complainant also has established goodwill and recognition in the Mark, for example, by its use on the Internet and social media and its worldwide sale and use of its services. The Domain Name is identical to the “CANVA” Mark because it replicates the distinctive “CANVA” Mark in its entirety, without alteration within the second level domain. With regards to the generic top-level domain (“gTLD”)“.courses”, this should be disregarded as it is a standard registration requirement. But it should be noted that Complainant uses the “CANVA” Mark in commerce for providing courses on graphic design, thus the addition of the “.courses” top-level domain (“TLD”) does not dispel similarity between domain and trademark.

Respondent does not have any trademark rights or unregistered rights to “CANVA”. Complainant has not licensed Respondent to use the Domain Name. Respondent has used the Domain Name to host a series of Pay-Per-Click (PPC) links. It is responsible for the content displayed on its website even if PPC links appear “automatically.” Some of these links refer directly to Complainant’s offering of services, others forward online users to competitors of Complainant. Such PPC links are not a bona fide offering. Thus, Respondent has deliberately used the goodwill attached to the “CANVA” Mark for its own monetary gain. Also, to the best of Complainant’s knowledge, Respondent is not commonly known by the “CANVA” Mark nor is it offering any goods or services under the Mark. There is no plausible reason for registering the Domain Name other than the motive of taking advantage of the goodwill and valuable reputation attached to the Mark. Complainant’s “CANVA” Mark is a fanciful term used to represent Complainant’s goods and services. There is no generic or common usage for the term “CANVA”, nor has any evidence come to light since the Domain Name’s registration that Respondent had intended to use the Domain Name in a legitimate non-commercial or fair way. In fact, Respondent’s first action when registering the Domain Name was to list it for sale for USD 1,000. This demonstrates that the Domain Name was not registered for any “fair use” purposes.

Complainant’s earliest trademark registration predates the creation date of the Domain Name by eight years. In addition, substantial goodwill has accrued since Complainant’s establishment in 2012 – “CANVA” has become synonymous with online graphic design tools. Searching “CANVA” on popular Internet search engines such as Google lists Complainant’s Mark and services as the first result. Moreover, Complainant’s trademark registrations can be found on public trademark databases.

Respondent has ignored a cease and desist notice sent by Complainant’s representatives on June 4, 2021 by using the registrar’s online form (which limits word count). This notice was sent to put Respondent on notice of Complainant’s trademarks and rights, and with a view to resolve the matter amicably.

There is clear evidence of a pattern of bad faith based on Respondent’s domain name portfolio. Some examples of bad faith domain names include the following: <aliexpress.study> “ALIEXPRESS”; <amazonaws.courses> “AMAZON” / “AWS”; <cloudflare.study> “CLOUDFLARE”; <duckduckgo.study>; “DUCK DUCK GO”; <expedia.study> “EXPEDIA”; <grammarly.courses> “GRAMMARLY”; <playstation.courses> “PLAYSTATION”; and <spotify.courses> “SPOTIFY”. Each of these domain names contains a famous and distinctive brand, with TLDs “.courses” or “.study”. All such domains are similarly registered with the Registrar. It appears that most of Respondent’s domain names are being used to redirect users to PPC links. Also, Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the “CANVA” Mark. The Domain Name clearly comprises Complainant’s globally distinctive “CANVA” Mark. Respondent’s use of PPC links on the website associated with the Domain Name constitutes a clear attempt to generate a commercial gain, particularly by misleading online users with the Domain Name, and subsequently redirecting these online users to third-party websites. Respondent is using this commercial value and goodwill of the Mark to attract revenue through PPC links because some of those links are associated directly to the services offered under the Mark. Further evidence of Respondent’s intention to derive commercial gain through the Domain Name is that Respondent has listed it for sale for USD 1,000 – a figure clearly in excess of its registration costs.

B. Respondent

The following summarizes the points Respondent made:

1) I own the Domain Name.

2) I am currently a “passout” student. When I registered the Domain Name, I wanted a website, which provided and encouraged students for VA (Virtual Assistance courses). I chose <Canva.courses>, which consists of "Can+VA+Courses" meaning "You definitely do VA Courses". That is commonly used for VA courses.

3) [ADR FORUM] No.1780755 (<Wikipedia.kim>) indicates that if you are right at your place no one can take your own domain.

4) I registered the Domain Name and put it up for sale because I am busy preparing my project for this Domain Name but I don’t want to sell it so I don't configure the payment method so no one can purchase it.

5) I legally purchased the Domain Name. After receiving the cease and desist letter I felt extremely helpless.

6) I invested nearly 200$ in registering the Domain Name and the hosting charge. I have no further plans to develop my VA Courses Project.

7) I looked at many forums (like namepros) for help and they suggested I use PPC so that I can recover my invested amount without harming Complainant’s Mark. I use PPC only to recover the amount I spent.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is uncontested that Complainant has trademark rights in the “CANVA” Mark by virtue of the trademark registrations mentioned above.

Also, it is uncontested that the Domain Name <canva.courses> is identical to Complainant's “CANVA” Mark as it incorporates the Mark in its entirety. 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, adding the gTLD “.courses” is of no legal significance from the standpoint of comparing the Domain Name to the Mark because the use of a gTLD is required of domain name registrants. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602; see also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at 1.11.2 (“WIPO Overview 3.0”). However, using the “.courses” TLD does not dispel similarity between Domain Name and the Mark but affirms it, in particular noting that Complainant uses its “CANVA” Mark in commerce for providing courses on graphic design.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Respondent has not alleged that it owns any rights to the CANVA Mark. And Complainant has not licensed Respondent to use the Mark for the Domain Name or any other purpose. Complainant submits that Respondent has used the Domain Name to host a series of Pay-Per-Click (PPC) links. Some of these links go directly to Complainant’s services and others forward the public to Complainant’s competitors. Claimant argues that according to WIPO Overview 3.0, at 2.9, parked pages comprising PPC links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark. Thus, Complainant argues that rather than making a bona fide use, Respondent has deliberately used the goodwill attached to the “CANVA” Mark for its own monetary gain. Furthermore, Complainant argues that Respondent is responsible for the content displayed on its website even if PPC links appear automatically. Id. at 3.5

To the best of Complainant’s knowledge, Respondent is not commonly known by the “CANVA” Mark, nor is it offering any goods or services under the Mark. Complainant notes that the Mark is a fanciful term used to represent Complainant’s goods and services and that there is no generic or common usage for it. Thus, Complainant asserts there is no plausible reason for registering the Domain Name, other than to take advantage of the goodwill and reputation attached to the “CANVA” Mark.

Furthermore, Complainant asserts that there is no evidence that Respondent had intended to use the Domain Name in a legitimate noncommercial or fair way, noting that Respondent’s first action when registering the Domain Name was to list it for sale for USD 1,000. And Respondent is gaining financially by misleadingly diverting online users using the Domain Name that is hosting PPC links.

In response to Complainant’s prima facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, Respondent alleges that he owns the Domain Name. That however, does not confer rights in the Mark. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118. Further, Respondent’s story that he chose <canva.courses> for the Domain Name because he wanted to use it with a website that encouraged students taking virtual assistance courses – "Can+VA+Courses" meaning "You definitely do VA Courses" – is unsubstantiated and far-fetched at best.

Respondent admits that he invested nearly (presumably) USD 200 in registering the Domain Name and for the hosting charge and that he pursued the PPC links to recover his investment. Thus, Respondent has confirmed his intended financial gain also from using the Domain Name in conjunction with the website having PPC links.

Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel concludes, on the evidence submitted, that Respondent has registered and used the Domain Name in bad faith. Complainant’s rights in the “CANVA” Mark are uncontroverted, as is the fact that Respondent registered the Domain Name substantially after Complainant established its rights in the Mark. Respondent appropriated the entirety of Complainant’s “CANVA” Mark (in which Respondent has no rights or legitimate interests) and chose to use it with a particular TLD – “courses” – which specifically refers to an aspect of Complainant’s business. That is, Complainant uses the “CANVA” Mark in commerce for providing courses on graphic design. And Respondent populated his website with links to Complainant’s website as well as the websites of competitors. Thus, the Panel finds it is not by chance that Respondent registered the Domain Name using the “CANVA” Mark, nor is it credible that Respondent registered the Domain Name to encourage students for Virtual Assistance courses that they can do those courses – Can+VA+Courses. It is more likely than not that Respondent knew of Complainant and it rights in the “CANVA” Mark when registering the Domain Name.

Respondent is clearly using the Domain Name for commercial gain. First, the use of PPC links by a Respondent on a website associated with an infringing Domain Name constitutes the requisite commercial gain. Previous panels have stated that such use is “bad faith” under the Policy. See, e.g., Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598. Moreover, Respondent has listed the Domain Name for sale for USD 1,000, which is clearly in excess of Respondent’s registration costs. Lastly, Respondent himself admitted that the monetary gain from using PPC links will help “recover my invested amount.”

Further evidence of Respondent’s bad faith is that he ignored twice the cease and desist letters from Complainant. And Respondent has registered numerous other domain names also containing well-known third parties’ marks which, in the Panel’s opinion, demonstrates that Respondent has clearly engaged in a pattern of registering domain names to prevent the owner of the trademark or service mark incorporated from reflecting the mark in a corresponding domain name.

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 Domain name, <canva.courses> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: September 30, 2021