Canva Pty Ltd. v Mihaela Sinclair

WIPO Case No. D2024-3724

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd. v. Mihaela Sinclair

Case No. D2024-3724

1. The Parties

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

The Respondent is Mihaela Sinclair, Romania.

2. The Domain Name and Registrar

The disputed domain name <canva.forum> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, an amended Complaint on September 17, 2024.

2024. On September 13, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On September 13, 2024, 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 (Whois Privacy, Private by Design,
LLC) and contact information in the Complaint. The Center sent an email communication to the
Complainant on September 16, 2024, providing the registrant and contact information disclosed by the
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 September 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on October 15, 2024.

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The Center appointed Andrea Cappai as the sole panelist in this matter on October 22, 2024. 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, founded in 2012, is an established online graphic design platform enabling users to
access a range of free templates and editing tools for both personal and professional projects. The platform
serves a global user base, with more than 130 million active users per month across 190 countries.

The Complainant’s services are offered exclusively online and are accessible in approximately 100 languages. Marketing is tailored to various regions, with region-specific websites employed to enhance accessibility and relevance for users in distinct jurisdictions.

In addition to its online platform, the Complainant maintains a robust social media presence, reaching millions of followers and prominently utilising its trademark to promote its services.

The entire online strategy outlined above contributes significantly to enhancing the online presence and relevance of the Complainant’s trademarks.

The Complainant holds numerous trademark registrations for the mark CANVA, including:

1.        United States of America trademark Reg. No. 4316655

Mark/Name: CANVA
Registration Date: April 9, 2013
Class: 42

2.        International trademark Reg. No. 1204604

Mark/Name: CANVA
Registration Date: October 1, 2013
Class: 9

3.        International trademark Reg. No. 1429641

Mark/Name: CANVA
Registration Date: March 16, 2018

Classes: 9, 40, and 42

The Complainant operates under the primary domain name <canva.com>.

The disputed domain name was registered on November 24, 2023. As of the filing date of the Complaint, the disputed domain name was redirecting users to a website advertising gambling service.

Currently, no further information is available regarding the Respondent.

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.

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Notably, the Complainant contends that it holds multiple CANVA trademarks across various jurisdictions, emphasising the brand’s strong recognition and goodwill since its inception. The disputed domain name is identical to the CANVA trademark, with no indication that the Respondent possesses any rights to CANVA or has received a license to use it. Furthermore, the Respondent does not appear to be commonly known by the term “canva” and has neither used nor prepared to use the disputed domain name in connection with any legitimate goods or services; instead, the disputed domain name redirects users to an unrelated gambling website.

Given the established reputation and goodwill associated with its trademark, the fanciful and unique nature of CANVA mark, and the fact that the Complainant’s earliest trademark registrations predate the disputed domain name’s creation by several years, the Complainant argues that the Respondent intentionally registered the disputed domain name to target its trademark.

Despite the Complainant sending a cease-and-desist letter on August 1, 2024, the Respondent failed to respond or provide any evidence of good-faith use.

B. Respondent

The Respondent did not reply to the Complainant’s 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 identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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

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.

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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 Complainant confirms that the Respondent has neither authorisation nor affiliation to use the domain name to the Complainant’s mark indicates an intentional attempt by the Respondent to mislead Internet users and profit from this association, thereby negating any rights or legitimate interests in the disputed domain name.

This conclusion is further supported by the timing of the disputed domain name’s registration relative to the
Complainant’s prior rights and the significant visibility of the Complainant’s mark, as evidenced by active
Internet user engagement and a robust online presence.

At the time of filing the Complaint, the disputed domain name redirected Internet users to a website promoting gambling services, aiming to attract Internet users interested in the Complainant’s mark for commercial gain by creating a likelihood of confusion. Such use, evidently intended to exploit the Complainant’s trademark or deceive users, does not constitute a legitimate offering.

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 Respondent registered the disputed domain name – comprising
the Complainant’s fanciful trademark – for no conceivable reason other than to target the Complainant’s
trademark. This is particularly evident given the substantial goodwill associated with the trademark and the
Complainant’s strong reputation as an established provider of graphic design tools. Indeed, a search for
the Complainant’s trademark on popular Internet search engines prominently displays its products.
WIPO Overview 3.0, section 3.1.4.

Moreover, the Panel observes that it is reasonable to conclude that the Respondent is deliberately using the disputed domain name – identical to the Complainant’s mark – to attract and divert Internet users. Internet users intending to access the Complainant’s services are instead redirected to a gambling website, from

which the Respondent is likely profiting through such redirections.

The Panel further notes that the Complainant sent a cease-and-desist letter to the Respondent and cannot fail to observe that, although the Respondent was given the opportunity to provide evidence of any actual or contemplated good faith use, it chose not to respond.

Additionally, based on the information provided by the Complainant, the Respondent has been involved in three previous domain name disputes, all of which resulted in the transfer of the domain names to the complaining parties. See, for instance, Ninja Global Ltd. v. Mihaela Sinclair, WIPO Case No. D2024-0452; Rootz LTD v. Mihaela Sinclair, WIPO Case No. D2024-3636. This suggests a pattern of bad faith conduct. Furthermore, the Complainant points out that the Respondent owns several domain names that appear to infringe upon third-party trademarks.

All of the above serve only to reinforce the conclusion that the Respondent acted in bad faith in the registration and use of the disputed domain name.

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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 <canva.forum> be transferred to the Complainant.

/Andrea Cappai/
Andrea Cappai
Sole Panelist
Date: November 5, 2024