Canva Austria GmbH v Sy Quang Phan

WIPO Case No. DAI2025-0027

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Canva Austria GmbH v. Sy Quang Phan

Case No. DAI2025-0027

1. The Parties

The Complainant is Canva Austria GmbH, Austria, represented by SafeNames Ltd., United Kingdom.

The Respondent is Sy Quang Phan, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <remove-bg.ai> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2025.
On June 18, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 18, 2025, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on June 23,
2025, 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

June 25, 2025.

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 June 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2025. The Respondent sent an email communication to the Center on July 14, 2025.

The Center appointed Mladen Vukmir as the sole panelist in this matter on July 31, 2025. 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.

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4. Factual Background

The Complainant is Canva Austria GmbH, a company incorporated under the laws of Austria with its
principal place of business in Vienna. Originally established in 2018 under the name Kaleido AI GmbH, the
Complainant developed Remove.bg, an AI-based image editing tool that enables automatic background
removal from photos and operates exclusively via the domain name <remove.bg>. In 2021, the Complainant
was acquired by Canva Pty Ltd, a globally recognized graphic design platform headquartered in Australia,
and in January 2024, it changed its name to Canva Austria GmbH to reflect its integration into the Canva
corporate group. Given the recent change in the company name, this is yet to be reflected in all of the
Complainant’s registered trademarks, which is a common aspect of trademark ownership transitions
following corporate restructuring. The Remove.bg tool is widely used globally, with over 32 million monthly
users from more than 200 countries, processing more than 150 million images per month. It is offered
through subscription plans, pay-as-you-go options, or for free, and is also integrated into third-party platforms
such as Google Photos, Shopify, and OneDrive. The Complainant maintains a strong online presence and a

broad portfolio of enterprise clients worldwide.

The Complainant is the owner of several trademark registrations for the REMOVE.BG mark, including
International Trademark Registration No. 1591574, registered on April 1, 2021; European Union (“EU”)
Trade Mark No. 018207829, registered on June 20, 2020; and United States (“US”) Registration No.
6868239, registered on October 11, 2022. These registrations cover goods and services in classes 9 and 42
of the International Classification (“REMOVE.BG trademark”).

The Complainant is also the owner of the domain name <remove.bg>. This domain name serves as the official website of the Complainant and is used to promote its services and provide access to its image editing tool.

The disputed domain name <remove-bg.ai> was registered on May 17, 2023. At the time of the Complaint, it resolved to a website operated by the Respondent, which was actively offering AI-powered image background removal services closely resembling and directly competing with the Complainant’s REMOVE.BG services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

(i) it is an Austrian company originally established in 2018 as Kaleido AI GmbH and acquired by Canva Pty Ltd in 2021, later renamed Canva Austria GmbH in 2024. It developed the AI-based tool Remove.bg, which enables automatic background removal and operates via <remove.bg>, attracting over 32 million monthly

users globally. The Complainant owns several trademark registrations for REMOVE.BG, including
International, EU, and US registrations covering classes 9 and 42.

(ii) the disputed domain name is confusingly similar to the Complainant’s registered trademark REMOVE.BG. It incorporates the mark in its entirety, with only a hyphen replacing the dot, which does not avoid confusion. The Complainant argues that such minimal alterations do not eliminate similarity under the Policy, and that

the generic Top-Level Domain “.ai” should be disregarded in the similarity assessment.

(iii) the Respondent has no rights or legitimate interests in the disputed domain name, as it has not been authorized by the Complainant to use the REMOVE.BG mark and is not commonly known by that name. The disputed domain name resolves to a website offering services identical to those of the Complainant,

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using similar branding and email addresses that mimic the Complainant’s contact details. Such conduct
demonstrates an intent to impersonate the Complainant and profit from its reputation, which cannot
constitute a bona fide offering of services or fair use.

(iv) the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark have been aware of the Complainant’s well-known brand, given its media exposure and prominent search engine results. The Respondent’s website offers identical AI image-editing services, directly competing with and mimicking the Complainant, including comparisons to REMOVE.BG and use of keyword-optimised content targeting the Complainant’s customers. Further, the Respondent ignored a cease and desist letter sent on January 22, 2025 and temporarily redirected the disputed domain name to another site (at <snapbg.ai>), only to later reinstate the REMOVE.BG-branded content, demonstrating an attempt to avoid enforcement while continuing to benefit from the Complainant’s reputation. The deliberate use of the Complainant’s mark in the disputed domain name and website, without any disclaimer or legitimate explanation, creates a likelihood of confusion and constitutes bad faith under paragraph 4(b)(iv) of the Policy

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, a communication was received from an unconfirmed source purporting to be the Respondent; from the content of the email the Panel is satisfied that the communication may be regarding as coming from the Respondent. This

communication claimed that the disputed domain name was intended to offer technical guidance, that there
was no intent to infringe on the Complainant’s rights, and that the Respondent removed the concerned
content and would take further action to avoid potential conflict with the Complainant’s products in future. No

evidence was provided in support of the above contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety, with the sole difference being the replacement of the “.” with a hyphen between “remove” and “bg”, which does not prevent a finding of confusing similarity. Hyphens are generally disregarded in such assessments as they do

not materially affect the visual or phonetic impression of the mark.

Furthermore, the “.ai” country-code Top-Level Domain (“ccTLD”) for Anguilla, is a standard registration
requirement and as such may be disregarded under the first element confusing similarity test, see

WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent has not provided explanation or evidence demonstrating any rights or legitimate interests under any of the circumstances enumerated in the Policy or otherwise. The Respondent has not submitted evidence of a bona fide offering of goods or services, or of any legitimate noncommercial or fair use of the

disputed domain name.

Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name <remove-bg.ai> was registered on May 17, 2023, after the Complainant had obtained trademark registrations for REMOVE.BG, the earliest of which dates back to 2020. The Complainant has submitted evidence indicating that its REMOVE.BG mark had

acquired a certain degree of recognition in connection with AI-based background removal services prior to
the Respondent’s registration of the disputed domain name.

The Panel finds that, the website associated with the disputed domain name offers background removal services similar to those provided by the Complainant. The website’s FAQ section makes a direct reference to the Complainant’s brand by comparing the Respondent’s services to those of the Complainant, emphasizing purported advantages such as better performance and ease of use. Considering the timing of the registration, the near identity of the disputed domain name with the Complainant’s mark, the use of the disputed domain name for similar services, and the absence of clear steps to avoid confusion, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s mark at the time of registration and intended to capitalize on the mark’s reputation to attract Internet users. Moreover, given that the Complainant’s tool is powered by AI and marketed as such, the inclusion of the “.ai” ccTLD (which is frequently understood by Internet users as a reference to artificial intelligence, particularly in connection with technology services) to the Complainant’s trademark in the disputed domain name may increase the likelihood of confusion by falsely suggesting an association with the Complainant.

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In his correspondence with the Center, the Respondent acknowledged receipt of the Complaint and explained that the website was developed to offer technical guidance to users, with no intention to infringe the Complainant’s rights or to act in bad faith. He further noted that the relevant content had been removed and expressed willingness to take steps to avoid any potential conflict. However, aside from this general statement of intent, the Respondent did not submit any formal Response, nor did he provide supporting evidence or legal arguments rebutting the Complainant’s claims. Moreover, the Panel notes that the disputed domain name continues to resolve to an active website offering directly competing services under a name essentially identical to the Complainant’s prior-registered trademark, with a generally similar look and feel as the Complainant’s website.

Accordingly, the Panel finds that the Respondent’s conduct falls within the scope of paragraphs 4(b)(iii) and
(iv) of the Policy.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. See WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Complainant has established the third element of the Policy.

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 <remove-bg.ai> be transferred to the Complainant.

/Mladen Vukmir/
Mladen Vukmir
Sole Panelist
Date: August 14, 2025