WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd v. Contact Privacy Inc. Customer 12410081353 / Tanner
Case No. D2021-2387
1. The Parties
The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Contact Privacy Inc. Customer 12410081353, Canada / Tanner, United States of America.
2. The Domain Name and Registrar
The disputed domain name <canvaemail.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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 the Complainant on July 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 29, 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 the Respondent of the Complaint, and the proceedings commenced on August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 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. Online users can create leaflets, social media posts, and website designs for which the Complainant offers templates.
The Complainant’s services are offered exclusively online through its official website “www.canva.com”. The Complainant also launched an app and is present on 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 Registration No. 4,316, 655, in class 42, of April 9, 2013;
- Australian Trademark Registration No. 1483138, in class 9, of September 9, 2013;
- International Trademark Registration 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. The disputed domain name does not resolve to an active website. A warning letter was sent to the Respondent by the Complainant on June 4, 2021. It remained unanswered.
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. The addition of the term “email” does not prevent the confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” may 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 which evidences its lack of rights or legitimate interests, 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 in 2012, the Respondent who registered the disputed domain name in 2021, knew of the Complainant’s trademark when registering it. In this context, the Complainant underlines that when searching online for “canva”, “canva email”, or “canvaemail, the Complainant’s brand and services appear as the first result. The Respondent chose to ignore the cease and desist letter sent by the Complainant. Furthermore, passive holding of a domain name results in a bad faith use in the light of the circumstances of the case”, particularly since the CANVA trademark of the Complainant is well-known. The use of the term “email” in conjunction with the famous CANVA trademark risks consumer confusion, as consumers would believe emails emanating from the disputed domain name to be associated with the Complainant. Indeed, MX records are attached to the disputed domain name which means that the Respondent has the ability of sending and receiving emails using an email address ending in “@canvaemail.com” which poses a real threat of consumer confusion. There is no evidence that the Respondent uses or intends to use the disputed domain name in good faith.
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 trademark rights in CANVA through several trademark registrations, including in the United States where the Respondent is based.
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 term “email” does not prevent a finding of 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 noncommercial 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.
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 or that that the Respondent would have any rights or a legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, incorporating the Complainants trademark and a descriptive term, carries a risk of implied affiliation (see section 2.5.1, WIPO Overview 3.0).
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.
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 is inactive. However, the case file shows that the disputed domain name gives the technical ability to the Respondent to use it in order to exchange emails. This circumstance along with the notoriety of the CANVA trademark support an inference of bad faith use of the disputed domain name.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings and concealed its identity behind a privacy service, which are further indications of bad faith in the present circumstances.
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, <canvaemail.com> be transferred to the Complainant.
Theda König Horowicz
Date: September 20, 2021