WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Dang Nguyen, Dũng, Dung Nguyen

Case No. D2021-3519

1. The Parties

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

The Respondents are Dang Nguyen, Viet Nam (the “First Respondent)”, Dũng, Viet Nam (the “Second Respondent”), and Dung Nguyen, United States of America (“United States”) (the “Third Respondent”)¹ .

2. The Domain Names and Registrars

The first disputed domain name <canvalifetime.com> is registered with SRS AB (the “First Registrar”).

The second disputed domain name <canva-pro.net> is registered with Hostinger, UAB (the “Second Registrar”)

The third disputed domain name <pro-canva.com> and the fourth disputed domain name <2canva.com> are registered with Hosting Concepts B.V. d/b/a Registrar.eu (the “Third Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 25, 2021, the Third Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 25, 2021, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 26, 2021, the First 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 December 10, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 13, 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 Respondents of the Complaint, and the proceedings commenced on December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 13, 2022.

The Center appointed Knud Wallberg as the sole panelist in this matter on January 20, 2022. 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, which offers its users thousands of images and templates to choose from when creating graphic designs. The Complainant’s services are offered exclusively online, and the Complainant uses its main website “www.canva.com” to offer its services, which consists of a basic package, that is offered for free, and a paid version named “Canva Pro”, that has more features and design capabilities aimed predominately at professionals or graphic design teams within companies.

The Complainant has expanded internationally, particularly in the Asia-Pacific region, with offices in Beijing, China, and Manila, Philippines. The CANVA website is now available in Vietnamese and the Complainant’s business operations have expanded into the region.

The Complainant holds several registered trademarks for CANVA (the “CANVA Mark”) including United States Registration No. 4316655 registered on April 9, 2013, in Class 42; Australia Registration No. 1483138 registered on September 9, 2013, in Class 9; and International Registration No. 1204604 registered on October 1, 2013, in Class 9.

The Complainant has also established a social media presence and uses its CANVA Mark to promote its services under this name,

The first disputed domain name <canvalifetime.com> was registered on May 16, 2021, and resolves to a website purporting to sell access to the Complainant’s Canva Pro products.

The second disputed domain name <canva-pro.net> was registered on September 18, 2021, and does not resolve to an active website.

The third disputed domain name <pro-canva.com> was registered on September 17, 2021, and does not resolve to an active website. At the time of filing of the Complaint the disputed domain name resolved to a website purporting to sell access to the Complainant’s Canva Pro products.

The fourth disputed domain name <2canva.com> was registered on September 1, 2021, and does not resolve to an active website. At the time of filing of the Complaint the disputed domain name resolved to a website purporting to sell access to the Complainant’s Canva products.

5. Parties’ Contentions

A. Complainant

The content of the Complaint can be summarized as follows:

The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s CANVA Mark as the disputed domain names all contain the distinctive CANVA Mark, plus additional terms. The addition of terms to a trademark does not prevent a finding of confusing similarity.

The Complainant further submits that the Respondent lacks rights or legitimate interests in the disputed domain names. To the best of the Complainant’s knowledge, the Respondent does not have any trademark rights to the term “canva” or any other terms used in the disputed domain names. There is also no evidence that the Respondent retains unregistered trademark rights to the term “canva” or any other terms used in the disputed domain names. Neither has the Respondent received any license from the Complainant to use domain names featuring the CANVA Mark. In addition, the Respondent is making a commercial use of the disputed domain name by selling fraudulently obtained log-in credentials to the Complainant’s services and such use is never a bona fide commercial use nor is it legitimate noncommercial use.

The Complainant finally submits that the disputed domain names have been registered and used in bad faith. The fact that the Respondent has chosen to host content on the three of the four disputed domain names, which evidently relates to the Complainant’s official services, clearly shows that the Respondent is aware of the Complainant and of the Complainant’s right to the CANVA Marks when he registered the disputed domain names. As far as the non-use of the disputed domain name <canva-pro.net> is concerned, this use also constitutes bad faith use under the doctrine of passive holding. The CANVA Mark is distinctive, attained a strong reputation and was widely known at the time of registration of this domain name. Furthermore, the disputed domain names are clearly targeted towards the Complainant’s CANVA Mark and offerings, and there is no evidence of contemplated good faith use, nor any plausible contemplated use, which could not be illegitimate.

The Complainant requests that although the Complaint is filed against the three different Respondents, it shall be consolidated. The Complainant thus submits that the disputed domain names are subject to common control based on the following factors:

- Each registrant name is highly similar to each other.
- The Complainant has been involved in a previous dispute involving the First Respondent (“Dang Nguyen”) in Canva Pty Ltd v. Dang Nguyen, WIPO Case No. D2021-1169, and the content of <canvalifetime.com> is virtually identical to the content of the disputed domain name in the aforementioned case. The Third Respondent (“Dung Nguyen”) uses the same email address as the respondent of the aforementioned case on the “Contact” page of the website, which demonstrates that the First and Third Respondents are the same entity.
- The disputed domain name <canva-pro.net> was registered only one day after <pro-canva.com>, both of which contain similar lexical construction (i.e. “canva”, a hyphen, and “pro”). The Second Respondent’s name is simply listed as “Dũng”, which matches the name of the Third Respondent, “Dung Nguyen”. Moreover, the Second and Third Respondents are both using the same email address. The Complainant submits that this evidence sufficiently shows the linkage of the Second Respondent to the Third Respondent (and thus, by extension, the First Respondent).
- While the Second and Third Respondents’ addresses differ, it appears that the address of the Third Respondent is fake. It should not, therefore, be considered as differentiating the Second and Third Respondents.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Matter: Consolidation

Before addressing the three elements of the Policy, the Panel must first address a procedural issue, namely whether to accept in the present procedure that the Complaint against the three distinct Respondents, may be consolidated.

As it is stated in the first paragraph of section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. Paragraph two of the section then lists several factors that UDRP panels have considered in determining whether a consolidation is appropriate.

In this case, the disputed domain names are all constructed in the same manner, namely by including the Complainant’s CANVA Mark and an additional term or number. Based on the detailed explanation by the Complainant above in section 5A, the Panel finds that the Complainant has established a prima facie case that the Complaint can be consolidated. Neither of the three Respondents have rebutted this consolidation.

Consequently, the Panel finds that it is appropriate to consider the Complaint filed against all the Respondents in the present proceeding, which will therefore be referred to as the “Respondent” below.

6.2. Substantive Matters of the Complaint

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are all confusingly similar (in the sense of the Policy) to the Complainant’s registered CANVA Mark.

The disputed domain names thus all comprise the Complainant’s CANVA Mark in its entirety together with the terms “lifetime” or “pro” or the number “2”. None of the additional terms prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

The generic Top-Level Domains “.com” and “.net” are standard registration requirements and as such generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to all the disputed domain names.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings.

The first of the four disputed domain names resolves to a website allegedly offering unauthorized access to the Complainant’s services, just as the third and fourth of the disputed domain names previously resolved to websites allegedly offering unauthorized access to the Complainant’s services, replicating the Complainant’s design logo. Though Panels have recognized that resellers, distributors, or service providers using a domain name containing a complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, though certain elements enumerated under the Oki Data test, see section 2.8 of the WIPO Overview 3.0 and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Panel finds the disputed domain names do clearly not satisfy the Oki Data test.

The fourth disputed domain name has never resolved to an active webpage; the non-use of which does not confer rights of legitimate interests upon the Respondent.

Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.

Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s CANVA Mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain names he chose could attract Internet users in a manner that is likely to create confusion for such users.

The Panel therefore finds that the disputed domain names were registered in bad faith.

The disputed domain names <pro-canva.com> and <2canva.com> were previously used to resolve to websites purporting to sell access to the Complainant’s Canva Pro products. Such use is clearly likely to create confusion with the Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of [the holder’s] web site or location or of a product or service on [the holder’s] web site or location”, and this use thus constitutes bad faith use under the Policy. The fact that the websites appear to be unavailable at present does not alter this finding.

The disputed domain name <canvalifetime.com> resolves to a website purporting to sell access of the Complainant’s Canva Pro products. The content of the website appears to have been a direct copy of the Complainant’s website under its <canva.com> domain name, which clearly gives Internet users the impression that the website was either an official website of the Complainant, or a website that was affiliated with the Complainant, either which is not the case. The Panel therefore finds that the disputed domain name has been used in bad faith to intentionally attempt “to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site”.

The disputed domain name <canva-pro.net> appears not to have been used actively, but this does not prevent a finding of bad faith use. As it is stated in section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”, especially in a case like this where it is evident that the disputed domain name is targeted towards the Complainant’s CANVA Mark, given the pattern of registrations and use made of the majority of the disputed domain names, and there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name.

Noting that the disputed domain names all incorporate a well-known trademark, that the Respondent has failed to participate in these proceedings, that the Respondent engaged the use of various privacy services to mask its details, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 disputed domain names, <canvalifetime.com>, <canva-pro.net>, <pro-canva.com>, and <2canva.com>, be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: February 15, 2022

¹ The Panel notes that the publicly-available WhoIs for the disputed domain names were masked via the use of various privacy services (e.g., Protected Protected, Shield Whois, Sweden; Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States; and, Whois Privacy Protection Foundation, Netherlands). Noting the Registrars disclosure of the underlying registrants, the Panel will proceed to treat “Dang Nguyen”, “Dũng”, and “Dung Nguyen” as the Respondents. Further discussion to be found under section 6.1 hereunder.