WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canva Pty Ltd v. Privacy Service Provided by Withheld for Privacy ehf / Ashley Wessinger
Case No. D2021-3998
1. The Parties
The Complainant is Canva Pty Ltd, Australia, represented by SafeNames Ltd, United Kingdom.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Ashley Wessinger, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <canvacomfree.com>, <diycanva.com>, and <printablecanva.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names 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. The Complainant filed an amended Complaint on 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 the Respondent of the Complaint, and the proceedings commenced on December 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. The Respondent sent informal communications on December 2, 2021 and December 9, 2021. The Center notified the Commencement of Panel Appointment Process to the Parties on December 30, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on January 12, 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 has, since 2012, operated an online graphic design platform under the CANVA mark. As of 2019, the Complainant was valued at USD 3.2 billion and had 20 million users across 190 countries. The Complainant offers its services from its primary domain name <canva.com>.
The Complainant owns registrations for its CANVA trade mark in numerous jurisdictions. Most relevant for this matter is United States (the Respondent’s location) trade mark registration No. 4316655 for CANVA, in class 42 bearing a registration date of April 9, 2013.
The Domain Names were all registered on July 18, 2021. After registration by the Respondent, the Domain Names all redirected to a graphic design platform that competes with the Complainant. At the time of lodging the Complaint and drafting of this Decision, the Domain Names did not resolve to any website.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its CANVA mark, that the Respondent has no rights or legitimate interests in the Domain Names, and they were registered and used in bad faith given that the Domain Names have been used to redirect to a competing service.
The Respondent did not submit a formal response. In informal correspondence with the Center and the Complainant, the Respondent asked to discuss the case. When presented with a settlement form containing an agreement to transfer the Domain Names to the Complainant, the Respondent rejected the form and simply stated: “However, I paid for these domains and there is no discussion on this issue.”
6. Discussion and Findings
A. Identical or Confusingly Similar
Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s CANVA mark is readily recognizable within the Domain Names, and the additional terms “com”, “free”, “diy”, and “printable” do not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trade mark. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has adduced sufficient evidence to establish that its CANVA mark was registered and well-known, including in the Respondent’s location, long prior to the registration of the Domain Names. The Domain Names are confusingly similar to the Complainant’s mark and the Complainant has certified that the Domain Names are unauthorised by it.
The Respondent has used the Domain Names, which incorporate terms descriptive of the Complainant’s business, to redirect to a platform that is competitive with the Complainant. The term “canva” bears no sematic value or relevance to the website to which the Domain Names have redirected which the Respondent might, in good faith, have sought to adopt. In the circumstances, it is likely that the redirection was undertaken in order to take unfair advantage of the reputation of the Complainant’s mark (Boursorama S.A. v. Pencreach Jacques, WIPO Case No. D2021-1195). This cannot represent a bona fide offering conferring rights or legitimate interests to the Respondent under paragraph 4(c)(i) of the Policy. There is no evidence that any of the other circumstances set out in paragraph 4(c) of the Policy pertain.
The Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests and the burden of production thus shifts to the Respondent (WIPO Overview 3.0 at section 2.1), which the Respondent has failed to rebut. The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term as in this case) to a well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here.
The Complainant’s mark is inherently distinctive with no generic meaning, enjoys a reputation and is highly specific to the Complainant. Thus, the Domain Names, incorporating terms descriptive of the Complainant’s business, cannot sensibly refer to any other party and this strongly suggests targeting of the Complainant.
The Panel has independently established that the Respondent is associated with the competing website to which the Domain Names have redirected, namely “www.pinkgrape.com”. Firstly, the Panel established, using historical WhoIs records, that the Respondent was the original registrant of the domain name <pinkgrape.com>. Secondly, the Panel found a reference to the Respondent (including matching full name and address) at the following URL: “https://www.pinkgrape.com/products/1142-wrap-around-address-labels”. Thus, it would appear that the Respondent has a commercial interest in the domain name to which the Domain Names have redirected, which brings the Respondent’s conduct squarely within paragraph 4(b)(iv) of the Policy (WIPO Overview 3.0 at section 3.1.4; Edmunds.com, Inc v. Ult. Search Inc, WIPO Case No. D2001-1319).
The fact that, at the time of lodging the Complaint and drafting of this Decision, the Domain Names did not resolve to any website does not prevent a finding of bad faith (WIPO Overview 3.0 at section 3.3).
The Panel draws an adverse inference from the Respondent’s failure to submit a formal response and reply to the Complainant’s contentions.
The Complainant has satisfied 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 Domain Names, <canvacomfree.com>, <diycanva.com>, and <printablecanva.com>, be transferred to the Complainant.
Date: January 17, 2022