Canva Pty Ltd. v Phan Van Thuong

WIPO Case No. D2025-0656

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Canva Pty Ltd. v. Phan Van Thuong

Case No. D2025-0656

1. The Parties

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

The Respondent is Phan Van Thuong, Viet Nam.

2. The Domain Names and Registrars

The disputed domain names <canvadreamlab.com>, <canvadream-lab.com>, <canva-dreamlab.com>, and
<canvaproai.com> are registered with Mat Bao Corporation. The disputed domain name
<canvadreamlab.ai> is registered with NameCheap, Inc. The disputed domain names are referred to
hereinafter as “the Disputed Domain Names”. Mat Bao Corporation and NameCheap, Inc. are collectively

referred to hereinafter as “the Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2025. On February 19, 2025, the Center transmitted by email to both Registrars a request for registrar verification in connection with the Disputed Domain Names. On February 19 and February 20, 2025, the

Registrars respectively transmitted by email to the Center their 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 February 21, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2025.

The Center appointed Michal Havlík as the sole panelist in this matter on April 11, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an online graphic design platform founded in 2012. The Complainant offers its services, as a basic package, for free. The Complainant offers a paid version named “Canva Pro”, which has more features and design capabilities. The Complainant has a growing portfolio of AI tools that are accessible through its subscription services, such as Canva Pro. For instance, the Complainant’s “Dream Lab” offering is an AI tool that enables users to generate images.

The Complainant owns multiple trademark registrations including:

- Australian trademark registration CANVA no. 1483138 with registration date March 29, 2012;

- United States of America (“United States”) trademark registration CANVA no. 4316655 with

registration date April 9, 2013;
- International registration CANVA no. 1429641 with registration date March 16, 2018 valid, inter alia, in Viet Nam, India, and Mexico; and

- International registration CANVA logo no. 1689790 with registration date March 21, 2022 valid, inter

alia, in the United States, United Kingdom, and Viet Nam.
(the “CANVA trademarks”).

The Complainant has also established a strong social media presence, with millions of followers, and uses the CANVA trademarks to promote its services under this name, for instance on Facebook, Instagram, and Pinterest. The Complainant promotes its business at “

The Disputed Domain Names were registered on the following dates:

Disputed Domain Name	Registration Date
<canvadreamlab.com>	January 25, 2025
<canvadream-lab.com>	January 20, 2025
<canva-dreamlab.com>	February 12, 2025
<canvaproai.com>	February 17, 2025
<canvadreamlab.ai>	February 14, 2025

At the time of filing of the Complaint, the Disputed Domain Names <canvadreamlab.ai>, <canvadream- lab.com> and <canva-dreamlab.com> did not resolve to any active website, while the Disputed Domain Names <canvadreamlab.com> and <canvaproai.com> resolved to visually identical websites displaying the Complainant’s trademark and logo with various images and purportedly allowing Internet users to upload images or videos. The Complainant’s evidence also shows that the Disputed Domain Names <canvadream- lab.com> and <canva-dreamlab.com> previously resolved to the same visually identical websites displayed at the Disputed Domain Names <canvadreamlab.com> and <canvaproai.com>.

Having checked the Disputed Domain Names, the Panel notes that there is no change on the websites after filing of the Complaint.

5. Parties’ Contentions
A. Complainant

The Complainant contends that is has satisfied each of the elements required under the Policy for a transfer of the Disputed Doman Names.

The Complainant cites its Australian and other trademarks for word and logo mark CANVA. The

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Complainant submits that previous UDRP panel decisions have recognised the Complainant’s reputation and goodwill in the CANVA trademarks, for instance Canva Pty Ltd. v. Nanci Nette, WIPO Case No. D2023-3651 or Canva Pty Ltd. v. Milen Radumilo, WIPO Case No. D2023-2990. Consequently, the Complainant submits that it satisfies the requirement of holding a right in the term “Canva”. The Complainant contends that the Disputed Domain Names are confusingly similar to the CANVA trademarks in which the Complainant has rights. Moreover, the Disputed Domain Names contain the CANVA trademarks in its entirety. According to the Complainant, the only change is the addition of dictionary terms “dream”, “lab”, “pro”, “ai”, and a hyphen which is inconsequential to exclude confusion with the Disputed Domain Names. In furtherance of the said arguments, the Complainant also disputes that the terms “dream” and “lab” expressly refer to the

Complainant’s “Dream Lab” products or its “Canva Pro” products and the AI tools it provides therein.

The Complainant submits that the Respondent lacks a right or legitimate interest in the Disputed Domain known by the term “Canva”.

Finally, the Complainant contends that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks and they are deliberately composed to generate confusion with the Complainant’s trademark reinforcing their confusing similarity. The Complainant also alleges that the registration and fraudulent use or non-use of the Disputed Domain Names shows bad faith. With regard to the long-term and broad use of the Complainant’s trademarks, the Respondent must have known about their existence when registering the Disputed Domain Names.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;

and
(iii)	that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has sufficiently demonstrated existence of its trademark rights registered in Viet Nam, Australia, the United States, and other jurisdictions. Therefore, the Complainant has shown the existence of valid trademarks for the purpose of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

The entirety of the mark is reproduced within the Disputed Domain Names. Accordingly, the Disputed section 1.7.

Although the addition of other word elements “dream”, “lab”, “pro”, “ai” or their combination may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Accordingly, this Panel finds that the Disputed Domain Names are confusingly similar to a trademark in which the Complainant has rights.

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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 in on the Complainant, previous panels have recognized that proving a respondent lack of 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 right 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 (even though 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 Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant

evidence illustrating rights or legitimate interests in the Disputed Domain Names such as those enumerated

in the Policy or otherwise.

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

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that my 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. WIPO Overview 3.0., section 3.2.1.

The Panel notes that the CANVA trademarks predate the registration of the Disputed Domain Names by almost 13 years and have been intensively used in numerous jurisdictions including Viet Nam where the Respondent resides. As a result of the long-term use, the CANVA trademarks are distinctive and known in the field of computer graphic design. Moreover, the Complainant’s trademark and logo have been used on the websites at some of the Disputed Domain Names, therefore, the Respondent knew about the CANVA trademarks prior to registering the Disputed Domain Names, see F. Hoffmann-La Roche AG v. Popo, WIPO Case No. D2008-0423.

The Disputed Domain Names <canvadreamlab.ai>, <canvadream-lab.com>, and <canva-dreamlab.com> do not resolve to any website. Such non-use of a domain name does not prevent a finding of bad faith. In this case, the Panel considers the distinctiveness or reputation of the Complainant’s trademark, the composition of the Disputed Domain Names that incorporate the registered trademark CANVA with additional terms

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).
“Dream Lab” referring to the Complainant’s product or “pro ai” referring to the AI tools under the holding of these Disputed Domain Names does not prevent a finding of bad faith under paragraph 4(a)(iii) of the Policy (see

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The Panel notes that the Disputed Domain Names <canvaproai.com> and <canvadreamlab.com> resolve to visually identical websites that display the Complainant’s trademark and logo with various images and purportedly allow Internet users to upload images or videos. Such use demonstrates the Respondent’s intention to attract Internet users to its websites by creating a likelihood of confusion with the Complainant and its trademarks. When taking into account all relevant facts and circumstances, the Panel notes that these Disputed Domain Names are confusingly similar to the distinctive and widely used CANVA trademarks, the Respondent has no rights or legitimate interests in the Disputed Domain Names and has failed to prove any evidence of actual or contemplated good-faith use. The Panel finds that the Respondent has registered and used these Disputed Domain Names in bad faith primarily for the purpose of diverting Internet users to its websites by creating a likelihood of confusion with the Complainant and its trademark, and thus infringing the Complainant’s rights, in order to possibly gain a commercial profit.

Considering the above, the Panel finds that the Respondent has registered and used the Disputed Domain

Names in bad faith.

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 Names <canvadreamlab.com>, <canvadream-lab.com>,

<canva-dreamlab.com>, <canvaproai.com>, and <canvadreamlab.ai> be transferred to the Complainant.

/Michal Havlík/
Michal Havlík
Sole Panelist
Date: April 11, 2025