WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Adhitya Tri Arifianto
Case No. D2021-3495
1. The Parties
The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd., United Kingdom.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Adhitya Tri Arifianto, Indonesia.
2. The Domain Names and Registrar
The disputed domain names <canvamastery.com> and <canvanesia.com> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 October 25, 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 adding an additional disputed domain name on November 1, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain name. On November 25, 2021, the Registrar transmitted by email to the Center its verification response confirming the Respondent contact details.
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 November 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on December 30, 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 company founded in 2012 in Australia. Users of the Complainant’s services have thousands of images and templates to choose from when creating graphic designs. The Complainant’s services are offered exclusively online, which make them inherently global.
The Complainant offers its services as a basic package for free, and as a paid version named “Canva Pro”.
Currently the Complainant has more than 30 million users per month with customers in 190 countries and its online platform is available in approximately 100 languages, including Indonesian (a language associated with the country where the Respondent is apparently located).
The Complaint holds trademark registrations for CANVA in various countries and territories through the world such as the following:
- the Indonesian trademark registration No. IDM000649623 filed on March 16, 2018 and registered on July 29, 2019, covering goods and services in classes 9, 40 ,and 42; and
- the International trademark registration No. 1204604 registered on October 1, 2013, designating various jurisdictions worldwide and claiming goods in class 9.
The Complainant’s main website is available at “www.canva.com”.
The disputed domain name <canvamastery.com> was registered on September 20, 2020 and the disputed domain name <canvanesia.com> was registered on April 8, 2021. At the time of filing the Complaint, the disputed domain names were used in relation to commercial websites to advertise services (such as the sale of graphic design templates) in connection with the Complainant’s CANVA trademark. The sites encourage Internet users to purchase heavily discounted packages that purport to provide regular template updates and a year’s membership to the Complainant’s “Canva Pro” offering. The “Disclaimer” wording available at the bottom of both disputed domain names’ sites merely comprises plain text and does not connect users to any actual disclaimer or any relevant details.
Before commencing this proceeding, on August 12, 2021 and August 19, 2021, the Complainant send Cease and Desist letters to the Respondent. No response was received.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its well-known trademark CANVA, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain names are 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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the CANVA trademark.
The disputed domain name names <canvamastery.com> and <canvanesia.com> incorporate the Complainant’s trademark with an additional term added, “mastery” and “nesia”, respectively. However, such additions do not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain names. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark CANVA, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain names, and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain names. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions to advance a claim to any rights or legitimate interests in the disputed domain names.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by this disputed domain names, or is making any legitimate noncommercial or fair use of the disputed domain names. In fact, at the time of filing the Complaint the disputed domain names resolved to commercial websites purporting to provide commercial packages in connection with the Complainant’s trademark. The websites did not contain any statement or clarification as to the websites’ affiliation or lack thereof to the Complainant.
In addition, and without prejudice to the above, the nature of the disputed domain names, comprising the Complainant’s well-known trademark in its entirety with additional term added, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant has been operating its business under the name and mark CANVA since 2012, and has established a strong reputation worldwide within the graphic design field.
Previous UDRP panels have found that the Complainant’s CANVA trademark is distinctive and has a strong reputation internationally. See for example Canva Pty Ltd v. Varinder Rajoria, KnotSync Ltd, WIPO Case No. D2021-2577; or Canva Pty Ltd v. Privacy Service Provided by Withheld for Privacy ehf / Orlando Watson, WIPO Case No. D2021-3621.
The disputed domain names were created in 2020 and 2021, respectively, and incorporate the Complainant’s mark with additional terms. The websites at the disputed domain names also feature the Complainant’s trademark and purportedly provide commercial packages in connection with the Complainant’s trademark.
From the above, the Panel finds that the disputed domain names were registered in bad faith, with knowledge of the Complainant, its business, and particularly targeting its CANVA trademark.
The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portals and to obtain commercial gain from the false impression created for Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s distinctive trademark in the disputed domain names, the content on the websites provided thereunder, which include the Complainant’s trademark, identical products, and the lack of any clear disclaimer on these websites.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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” is evidence of registration and use in bad faith.
Given that the disputed domain names incorporate the Complainant’s trademark and the websites operated under the disputed domain names display the Complainant’s trademark, provide identical products and services falsely suggesting an affiliation with the Complainant’s mark, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the websites corresponding to the disputed domain names who may be confused and believe that the websites are held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain. This activity may also disrupt the Complainant’s business and tarnish its trademark.
Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
The Respondent registered the disputed domain names under a privacy service and refused to participate in the present proceedings in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 names <canvamastery.com> and <canvanesia.com> be transferred to the Complainant.
Date: January 7, 2022