WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd. v. Bruno Henrique Lima De Castro
Case No. D2021-2347
1. The Parties
The Complainant is Canva Pty Ltd., Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Bruno Henrique Lima De Castro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <canvatopdesign.com> 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 20, 2021. On July 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.
The Center appointed Theda König Horowicz as the sole panelist in this matter on September 6, 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 in Australia. The Complainant offers its services, as a basic package, for free. A paid version named “Canva Pro” provides more features and design capabilities which is aimed predominantly at professionals or graphic design teams within companies.
The Complainant’s services are offered exclusively online through its official website “www.canva.com”. The Complainant also launched an app and is present in social media (Facebook, Twitter and Instagram). The Complainant’s business grew over the years, acquisitions were made and it has now offices in Australia, Philippines and China. A virtual design school was also created and blogs are maintained.
The Complainant holds several trademark registrations for CANVA, including:
- United States Trademark No. 4,316, 655, in class 42, of April 9, 2013
- Australian Trademark No. 1483138, in class 9, of September 9, 2013
- International trademark No. 1204604, in class 9, of October 1, 2013.
The mark is used as a word mark and as a logo where CANVA is inserted in a blue circle.
The disputed domain name was registered on April 28, 2021. It resolves to a page that displays a login page, prompting users to insert their username and password.
The Complainant sent a cease and desist letter to the Respondent on June 4, 2021.
5. Parties’ Contentions
The Complainant states to have trademark rights in the name CANVA through several registrations. The Complainant also alleges that its CANVA trademark has become highly distinctive to identify its services. The disputed domain name is confusingly similar to the CANVA trademark as it replicates the distinctive CANVA trademark in its entirety. Furthermore, the addition of the terms “top” and “design” does not prevent the confusing similarity and actually reinforces it as the word “design” is associated with the Complainant’s services. The generic top-level domain name (“gTLD”) “.com” must be disregarded.
The Complainant is of the opinion that the Respondent has no legitimate interests in the domain name, notably because (i) the Respondent does not to the best of the Complainant’s knowledge have trademark rights in CANVA, (ii) no license was given to the Respondent by the Complainant, (iii) the Respondent has not used the disputed domain name to the best of the Complainant’s knowledge in connection with a bona fide offering of goods since it is used as a phishing website and for email exchanges and (iv) the Respondent is not commonly known by the term CANVA.
The Complainant further states that the disputed domain name was registered and is used in bad faith. Due to the notoriety acquired by the Complainant’s trademark, which the Complainant started to use already in 2012, the Respondent who registered in 2021, knew of the Complainant’s trademark when registering the disputed domain name. The Respondent chose to ignore the cease and desist letter sent by the Complainant. In addition, the illegal phishing activity of the Respondent must be considered as a bad faith use of the disputed domain name. The Complainant underlines that the disputed domain name is used for email exchanges most likely to facilitate the fraudulent phishing activity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in 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
The Complainant showed to have trademark rights in CANVA through several trademark registrations.
According to section 1.7, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name contains the trademark CANVA in its entirety. The mere addition of the descriptive terms “top” and “design” is obviously not sufficient to exclude confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1, WIPO Overview 3.0.
The Complainant has made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain name.
In particular, the Panel notes that the case file does not show that the Respondent would have trademark rights on CANVA, would be known by CANVA or that a legitimate business would be run by the Respondent under the disputed domain name. The case file shows indeed that the disputed domain name was most likely chosen and used for phishing activities which is not considered as legitimate under the Policy.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file which would show that the disputed domain name has been legitimately used by the Respondent respectively that the Respondent would have a legitimate interest in the said name.
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has shown that its CANVA trademark has been registered since 2013 in several countries and that it has been widely used since the foundation of the company in 2012, particularly on the Internet, through social media and in apps. There is thus no doubt that CANVA acquired a high distinctiveness to distinguish the services of the Complainant.
The addition of the term “design” actually reinforces the likelihood of confusion with the Complainant’s trademark confusing similarity since it directly refers to the Complainant’s core business.
Hence, the Panel agrees with the Complainant regarding the fact that the Respondent thus knew or should have known of about the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see section 3.2.2, WIPO Overview 3.0).
The disputed domain name resolves to a webpage requesting information from the Internet user before being able to access a website. Furthermore, the case file shows that the disputed domain name gives the technical ability to the Respondent to use it in order to exchange emails. These circumstances indicate a bad faith use of the disputed domain name.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainant has established its case 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 <canvatopdesign.com> be transferred to the Complainant.
Theda König Horowicz
Date: September 13, 2021