WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Privacy Service Provided by Withheld for Privacy ehf / Ayush Jain

Case No. D2021-3905

1. The Parties

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

Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Ayush Jain, India.

2. The Domain Name and Registrar

The disputed domain name <digicanva.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 December 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on date of receipt December 2, 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 Respondent 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2022.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 1, 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

Complainant Canva Pty Ltd (“Canva”) is an Australian graphic design platform, used to create social media graphics, presentations, posters, documents, and other visual content. Complainant was founded in 2012 and is headquartered in Sydney, Australia.

Complainant owns numerous trademark registrations of the CANVA Mark in the United States of America (“United States”) for a wide range of goods and services. Sample trademark registrations for Complainant include:

- CANVA, United States Reg. No. 4,316,655, registered on April 9, 2013;
- CANVA, United States Reg. No. 5,288,088, registered on September 19, 2017; and
- CANVA, United Stated Reg. No. 6,114,099, registered on July 28, 2020

The disputed domain name was registered by Respondent on February 25, 2021. At the time of the filing of this complaint and currently, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s CANVA trademark in which Complainant has rights as demonstrated through its cited registrations. The CANVA Mark was adopted and has been continuously used in the United States of America since at least as early as 2012 in connection with numerous online products and services. Today, the CANVA Mark is largely recognizable due to the international nature of Complainant’s’s online business. Complainant maintains an extensive and international presence online through its main website, hosted at the domain name <canva.com>.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s CANVA trademark. Complainant asserts that the disputed domain name <digicanva.com> replicates the distinctive CANVA trademark, plus the term “digi”. Complainant also argues that the goodwill and recognition that has been attained under the Complainant’s name “CANVA is a distinctive identifier associated with Complainant’s services. The disputed domain name replicates the distinctive CANVA trademark, plus the term “digi”. Complainant argues that the addition of such descriptive term to their trademark is insufficient to negate confusing similarity.

Complainant argues that Respondent lacks any right or legitimate interest in the disputed domain name. Complainant asserts that Respondent does not have any trademark rights to the term CANVA or any other terms used in the disputed domain name. Complainant offers that there is also no evidence that Respondent retains unregistered trademark rights to the term CANVA or any other terms used in the disputed domain name, has and Complainant states that Respondent has not received any license from Complainant to use domain names featuring the CANVA trademark. Complainant also asserts that Respondent is not currently offering any goods or services from the disputed domain name, and that the disputed domain name is held passively and does not resolve to a webpage. However, Complainant states that the disputed domain name previously resolved to a website advertising website design and digital marketing services, and that this content was removed after a cease and desist letter was sent to Respondent.

Complainant alleges that Respondent is not commonly known by the term CANVA or “digicanva”, and that there is no plausible reason for the registration and use of the disputed domain name, other than the motive of keeping it from Complainant and to take advantage of the goodwill and valuable reputation attached to the CANVA brand. Complainant asserts that it has longstanding prior rights in the CANVA mark and the term has no generic meaning. Complainant argues that the use of “CANVA” to advertise services similar to those offered by Complainant cannot be deemed a bona fide offering under the UDRP.

Complainant argues that Respondent both registered and is using the disputed domain name in bad faith. Complainant’s earliest trademark registration predates the creation date of the disputed domain name by eight years, and substantial goodwill has accrued since Complainant’s establishment in 2012. Complainant asserts that the CANVA name has become well-known for its online graphic design tools.

Complainant provides background details on its prior attempts to resolves this matter with Respondent as additional evidence to support its arguments that Respondent is acting in bad faith in connection with the disputed domain name. Complainant states that sent a cease and desist letter to Respondent on March 12, 2021, and asserts that Respondent agreed to transfer the disputed domain name, in return for a settlement fee of USD 150 to cover Respondent’s expenses in registering the domain name. The Settlement Agreement was entered into on May 26, 2021 and was signed by both parties by June 10, 2021, stating that Respondent must transfer the domain name to Complainant. Complainant, however, indicates that Respondent has not carried out this transfer, and argues that the Settlement Agreement has not been fulfilled due to Respondent failing to transfer the domain name.

Complainant asserts that Respondent also used the domain name in bad faith prior to notice of the dispute. Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. Complainant argues that Respondent’s initial use of the disputed domain name was: (i) for commercial gain, as the website advertised services (including pricing for such services), and; (ii) an intentional attempt to attract users to the disputed domain name using the renowned “CANVA” mark, thus causing confusion in the mind of online users. Complainant asserts that the use of the disputed domain name to divert internet users to Respondent’s own website by exploiting the confusing similarity between the disputed domain name and Complainant’s trademark is evidence of bad faith. Complainant also alleges that Respondent, by registering the domain name, had engaged in such conduct in order to obtain commercial gain through potential purchases made on the website.

Complainant finally asserts that there is no plausible good faith use that can be conceived by Respondent in registering the disputed domain name, as it contains the well-known CANVA mark. Complainant argues that the addition of the prefix “digi” does not create a new or generic meaning, and that this is particularly so given the previous use of the domain name by Respondent, which was to advertise website design services under the term “DigiCanva”. Given the strength of the CANVA mark, the lack of any good faith use, and the implausibility of any active use which would be in good faith, Complainant argues that the current passive holding of the domain name does not negate a finding of bad faith use.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the disputed domain name was registered and is being used in bad faith.

A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. (See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340).

A. Identical or Confusingly Similar

A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. (WIPO Overview 3.0, section 1.2.1). Complainant has provided evidence that it owns several registrations in the United States for the CANVA trademark as referenced above. Therefore, Complainant has established that it has rights in the CANVA mark.

The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview 3.0, section 1.7). 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. Id.

The issue of “‘identical or confusingly similar” for the purposes of Paragraph 4(a)(i) is normally adjudicated by utilizing a side-by-side comparison to decide “whether the alphanumeric string comprising the challenged domain name is identical … or sufficiently approximates [the trademark]” (see Advanced Magazine Publishers Inc. d/b/a Conde Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743). Here, the disputed domain name incorporates the entirety of the CANVA mark, with the addition of the term “digi” (which implies a digital component to the mark, which Complainant’s’s brand already captures through its provision of online graphic design tools and for which it is widely recognized). The inclusion of the term “digi” does not cause the disputed domain name not to be confusingly similar to <canva.com> in visual or phonetic alphanumeric comparison. Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its CANVA Mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. (See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393). Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to come forward with any evidence showing rights or legitimate interests. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name. Additionally, the passive holding or non-use of a domain name has been considered by panels not to be a bona fide offering of goods or services. Previous UDRP panels have found that there was no bona fide offering of goods or services in an inactive website The disputed domain name does not associate any content whatsoever, nor does it demonstrate a use evincing rights or legitimate interests.

Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the CANVA trademarks prior to Respondent’s registration of the disputed domain name. Due to the global nature of Complainant’s CANVA brand and Respondent’s previous use of the disputed domain name to host a website advertising web design and digital marketing services, Respondent was likely aware of Complainant and its rights in the CANVA trademark when it registered the disputed domain name. (See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973). That Respondent registered a domain name nearly identical to Complainant’s trademark and primary domain name further indicates that Respondent was likely aware of Complainant and its CANVA trademarks.

Prior UDRP panels have found that the non-use of a domain name, including use under which the domain name does not resolve to an active website, would not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the concealment of the respondent’s identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id.

The passive holding doctrine applies in this case because Complainant’s mark is distinctive, particularly when acknowledging its widespread reputation and global presence; Respondent failed to present any evidence of a conceivable good faith use for the disputed domain name; it previously used the domain name for a website advertising web design services similar to those of Complainant taken down after receipt of a cease and desist letter from Complainant – and even the fact that the parties engaged in settlement talks but after agreeing to a transfer to Complainant, Respondent ceased to cooperate; and it is implausible that Respondent can put the disputed domain name to a good faith use without regard to Complainant’s rights in its CANVA marks. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing Complainant’s CANVA trademark with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as misleading Internet users and other third parties for Respondent’s commercial gain.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.

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 name<digicanva.com> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: February 15, 202