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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Antonio Fonseca

Case No. D2021-4222

1. The Parties

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

The Respondent is Antonio Fonseca, Brazil.

2. The Domain Name and Registrar

The disputed domain name <boxcanvapro.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent sent an informal communication on December 27, 2021. Upon request from the Complainant, the proceedings were suspended on December 30, 2021, for purposes of settlement discussions concerning the Domain Name. The proceedings were reinstituted on March 1, 2022, also upon request from the Complainant.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 11, 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 following facts are undisputed.

The Complainant is an online graphic design platform founded in 2012. Users of the Complainant’s services have thousands of images and templates to choose from when creating graphic designs. The online platform utilizes a ‘drag and drop’ methodology.

The Complainant offers its services under the CANVA brand, as a basic package, for free. The Complainant offers a paid version named “Canva Pro”, which has more features and design capabilities. The “Canva Pro” service offering is a well-known version of the Complainant’s services, aimed predominantly at professionals, graphic designers and digital marketing teams within companies.

The Complainant is owner of several trademark registrations for CANVA, including but not limited to the following registrations:

- United States of America trademark, with registration number 4316655 for CANVA (registered April 9, 2013).
- Brazilian trademark, with registration number 914634461 for CANVA (registered April 24, 2019).

These trademarks will hereinafter together be referred to, in singular, as the “Trademark”.

The Complainant is the owner of the domain name <canva.com>. The Complainant uses its website to offer its services. The Complainant’s website receives over 200 million visits per month. The Complainant is well-known in Brazil, being one of the highest-ranking countries for traffic to the Complainant’s website.

The Domain Name was registered on March 27, 2021. At the time of filing the Complaint, the Domain Name resolved to a website (the “Website”) where a placeholder webpage is depicted displaying the name of the hosting provider.

5. Parties’ Contentions

A. Complainant

Insofar as relevant for deciding this matter, the Complainant contends the following.

The Domain Name is confusingly similar to the Trademark. The Domain Name incorporates the Trademark in its entirety. Furthermore, the addition of the terms “box” and “pro” is insufficient to negate confusing similarity as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Moreover, where that descriptive term has some relation to the services provided under the Trademark, as is the case with “pro” (the Complainant offers a package under the name “Canva Pro”), such a combination enhances the association between the Domain Name and the Trademark. Furthermore, under the WIPO Overview 3.0, section 1.11.1, the addition of the generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement and as such is disregarded und the first element confusing similarity test”. Therefore, the Domain Name is confusingly similar to the Trademark.

The Respondent has no rights or legitimate interests in respect of the Domain Name. 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 Domain Name. Neither has the Respondent received any license from the Complainant to use domain names featuring the Trademark. The non-use of the Domain Name is considered by panels not being a bona fide offering of goods or services. Previous UDRP panels have found that the Respondent’s failure to associate content with the Domain Name constitutes a lack of rights and legitimate interests pursuant to the Policy. The Respondent is not currently offering any goods or services from the Domain Name. The Domain Name is effectively held passively: it resolves to a placeholder webpage displaying the name of the hosting provider, Hostgator. The mere ownership of the Domain Name does not confer a right or legitimate interest on the Respondent.

The Domain Name was registered and is being used in bad faith. The mere registration of the Domain Name, which is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Complainant’s earliest Trademark predates the creation date of the Domain Name by eight years. In addition, the CANVA name has become well-known for its provision of online graphic design tools. Therefore, in the field of online graphic design tools, CANVA is a well-established Trademark. The Respondent was clearly aware of the existence of the Complainant. The Respondent registered other domain names where the Respondent is offering products which are clearly related to the products and services offered by the Complainant. Furthermore, the Domain Name resolves to a placeholder webpage, and is held passively by Respondent. Previous UDRP panels have found bad faith in passive use, where the Complainant has a well-known trademark and the Respondent provides evidence of good faith use. As stated above, the Respondent was clearly aware of the existence of the Complainant and the Respondent has not provided any evidence of actual or contemplated good faith use.

The Respondent has also registered other domain names on which services related to those of the Complainant are offered.

B. Respondent

The Respondent did not substantively reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.

The Complainant has shown that it has rights in the Trademark.

As set out in the WIPO Overview 3.0 section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the Trademark, with the addition of the descriptive terms “box’ and “pro”. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the additional terms do not prevent a finding of confusing similarity. As stated in WIPO Overview 3.0, section 1.11.1, the addition of the gTLD “.com” “is viewed as a standard registration requirement and as such is disregarded und the first element confusing similarity test”.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark.

Therefore, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “boxcanvapro” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.

Further, the Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the Domain Name. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorized by the Complainant to use the Trademark.

Moreover, now that the Domain Name does not have any active content, and lacking any substantive Response, the Panel concludes that the Respondent is not considering a bona fide offering of goods or services under the Domain Name, nor a legitimate noncommercial or fair use.

Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name.

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

The Panel refers to its considerations under section 6.B and adds the following.

The well-known reputation of the Complainant and its Trademark, the distinctiveness of the Trademark, and the fact that the Respondent did not file a substantive response to the Complaint, are all circumstances from which the Panel draws the conclusion that the Domain Name was registered and is being used in bad faith.

The Panel on balance finds that here the Respondent must have registered the Domain Name in bad faith and takes into account (i) the passive holding of the Domain Name, (ii) the fact that the Respondent has other domain names registered on which he offers services related to those of Complainant (iii) the fact that the Complainant’s Trademark is well-known in the field of the offering of online graphic design tools. Under the given circumstances it is implausible that Respondent was not aware of Complainant and the Trademark at the time of registration. Furthermore, the Complainant offers a service under the name ‘Canva Pro’, which strengthens the impression of the confusing similarity between the Domain Name and the Trademark.

As stated in section 3.3 of the WIPO Overview 3.0, 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.

Therefore, the Panel is satisfied that the third element of the Policy is met.

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 Domain Name <boxcanvapro.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: March 18, 2022

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