Canva Pty Ltd v Milen Radumilo

WIPO Case No. D2023-2990

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd v. Milen Radumilo

Case No. D2023-2990

1. The Parties

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

Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The Disputed Domain Name <explaincanva.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2023.

On July 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On July 14, 2023, 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 (Redacted For Privacy Super Privacy Service LTD c/o Dynadot)
and contact information in the Complaint. The Center sent an email communication to Complainant on July
17, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting
Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July

19, 2023.

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 July 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2023. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on August 17, 2023.

The Center appointed Michael A. Albert as the sole panelist in this matter on August 23, 2023. 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

Complainant, Canva Pty Ltd, is an online graphic design platform founded in 2012 by Melanie Perkins, Cliff Obrecht and Cameron Adams. Complainant was valued at USD 40 billion in September 2021 and currently has more than 100 million active users per month (MAUs) with customers across 190 countries.

Complainant offers services from its main website, “ Third-party Internet traffic statistics indicate that Complainant’s main website received an average of more than 450 million visits per month

between March and May 2023.

Complainant holds numerous trademarks for CANVA, including United States trademark registration

Nos. 4316655, registered on April 9, 2013 and 6114099, registered on July 18, 2020.

The Disputed Domain Name was registered on March 17, 2023, and it resolves to a website with

pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar to trademarks in which

Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.

There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Disputed Domain

Name in connection with any bona fide offering of goods or services. Respondent has not been commonly known by the Disputed Domain Name, nor is Respondent is making legitimate fair use or legitimate noncommercial use of the Disputed Domain Name.

Respondent registered and is using the Disputed Domain Name in bad faith. Complainant notes

Respondent’s activation of mail exchange records for the Disputed Domain Name and emphasizes the risk

that could be caused to unsuspected customers of Complainant on receipt of emails from the Disputed

Domain Name. Complainant alleges that Respondent has likely engaged in or will engage at some point in

phishing activity with the Disputed Domain Name as it includes Complainant’s CANVA mark. The use of

PPC links on the Disputed Domain Name constitutes a clear attempt to generate a commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the CANVA trademarks. The Disputed Domain Name

is confusingly similar to Complainant’s well-known CANVA mark because it contains the entirety of

Complainant’s mark with the addition of the term “explain” and the generic Top-Level domain (“gTLD”)

“.com”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other

terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding

of confusing similarity under the first element. WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

Complainant confirms that Respondent has not received any license from Complainant to use the Disputed Domain Name. There is no evidence that Respondent is commonly known by, or holds any other rights or legitimate interests in the Disputed Domain Name. There is no evidence demonstrating a bona fide offering

of goods or services by Respondent. Respondent has not responded to Complainant’s prima facie showing

that Respondent lacks rights or legitimate interests, and thus has failed to rebut that showing.

Further, Respondent has been using the Disputed Domain Name as a PPC webpage containing links related to other products and services. Doing so reflects the lack of a bona fide offering of goods or services under or in connection with the Disputed Domain Name. As per the WIPO Overview 3.0, section 2.9, parked pages “comprising PPC links [do] not represent a bona fide offering where such links compete with or capitalize on

the reputation and goodwill of Complainant’s mark”. The Disputed Domain Name incorporates

Complainant’s trademark, with the addition of the word “explain”. It is reasonable to infer that Respondent uses the Disputed Domain Name to unfairly capitalize upon and take advantage of Complainant’s reputation

and the confusing similarity of the Disputed Domain Name with the CANVA mark. Such use cannot provide
Respondent with a legitimate interest, as discussed in Paris Hilton v. Deepak Kumar, WIPO Case
No. D2010-1364 and in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case

No. D2007-0267.

The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant’s earliest trademark registration predates the creation date of the Disputed Domain Name by

more than 10 years. Given the long use of Complainant’s well-known CANVA marks, and the incorporation

of that mark into the Disputed Domain Name, it seems highly likely that Respondent knew of the CANVA mark at the time Respondent registered and began using the Disputed Domain Name. The selection of a

domain name that is so obviously connected to a complainant’s trademark strongly suggests “opportunistic

bad faith”, particularly where it is held by someone with no affiliation with Complainant (see Singapore

Airlines Ltd v. European Travel Network, WIPO Case No. D2000-0641, and Wikimedia Foundation Inc. v.

Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798, where the panel also highlighted the

fact that Complainant’s mark predated Respondent’s registration of the domain name, which is also true in

the current case). There is no plausible reason for the registration of the Disputed Domain Name other than

to take advantage of the goodwill and valuable reputation attached to the CANVA brand.

Further, Respondent uses the Disputed Domain Name to direct Internet users to a webpage displaying PPC

links such as “Canvas Photo Prints” and “Photos to Canvas”, which are likely intended to generate revenue.

Intentionally attempting to attract, for commercial gain, Internet users to a competing website, by creating a

likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of

Respondent’s website or other location, constitutes bad faith.

The Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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, <explaincanva.com> be transferred to Complainant.

/Michael A. Albert/

Michael A. Albert

Sole Panelist
Date: September 6, 2023