WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd v. Riel Mendes Moura
Case No. D2021-2324
1. The Parties
The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Riel Mendes Moura, Brazil.
2. The Domain Name and Registrar
The disputed domain name <canvaprofissional.website> 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 July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2021, 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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on August 20, 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 provides an online graphic design platform founded in 2012 that offers thousands of images and templates to choose from when creating graphic designs. The Complainant’s services are offered exclusively online. The Complainant has 977 employees located in offices in Sydney, Manila, and Beijing.
The Complainant utilizes the mark CANVA (the “Mark”) to promote its services.
The Complainant owns the following registrations for the Mark:
- United States of America, Registration No. 4316655, dated April 9, 2013
- Australia, Registration No. 1483138, dated September 9, 2013
- International Registration No. 1204604, dated January 10, 2013
The Complainant owns and operates the domain name <canva.com> to offer its online design services.
The disputed domain name was registered on April 28, 2021. The disputed domain name resolves to a parking website offering links to various services for commercial gain. The Respondent did not respond to the Complainant’s cease and desist letter sent by email dated June 4, 2021.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name entirely incorporates the Complainant’s Mark followed by the term “profissional” which is the Portuguese translation of the English word “professional.” The Complainant further asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent has registered and used the disputed domain name to lure unsuspecting Internet users to its website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark followed by the term “profissional” which means “professional” in Portuguese. The addition of a dictionary term to the Mark within a disputed domain name does not prevent a finding of confusing similarity. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the addition to the Mark is a generic or dictionary term. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.website”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759 (transferring <monsterenergy.world>).
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, adopting and prominent featuring the Mark, carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
1. Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non‑exhaustive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
2. The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The Mark is not a common or descriptive term. The disputed domain name appends the Portuguese word “professional,” meaning “professional,” which when combined with the Mark appears to have been chosen to attract potential users of the Complainant’s graphic design services. Thus, common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering and using the disputed domain name. Additionally, the gTLD chosen by the Respondent, namely “.website”, reflects a potential design application for the Complainant’s online services. This conclusion is buttressed by the Respondent’s decision not to respond to either the Complaint or the Respondent’s cease and desist letter. Facebook, Inc. and Instagram, LLC v. C W / c w, c w, WIPO Case No. D2018-1159).
Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark when registering the disputed domain name, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. Instagram LLC v. contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419.
Finally, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>); and Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335 (transferring <monsterenergy.club>).
The Complainant has met its burden under 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 disputed domain name <canvaprofissional.website> be transferred to the Complainant.
William F. Hamilton
Date: August 29, 2021