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Canva Successfully Recovers 174 Domains in a Single Cybersquatting Case

Mar 20, 2024, 10:49 AM

Canva, an online design and publishing tool, has recently won a domain dispute through the Uniform Domain Name Dispute Policy (UDRP), recovering 174 domain names at once.

Last year, a fraudulent scheme was uncovered where several people kept registering domain names containing the CANVA brand and falsely advertising Canva Pro services. Most content on the domain names was identical but the registrants’ details were redacted.

Safenames, who represented Canva in the dispute proceedings, filed the UDRP complaint back in July 2023. Initially, the UDRP complaint had 143 domain names, all containing the CANVA registered mark with associated keywords. Upon disclosure of the 143 registrant’s details, each domain name had different contact details. The only common trait between them was the location of the registrants – Malaysia.

Further investigation into the disclosed details revealed an extra 31 domain names linked to this scheme. Those 31 domain names were added to the UDRP complaint, making it a total of 174 domain names.

The UDRP allows requests for consolidation of multiple respondents. Panels must look at the evidence presented to them to decide whether or not the domain names are under common control. The consolidation must also be fair and equitable to all parties. Evidence can include similarities in registrant identities, website content, and technical details (e.g., same IP address, name servers, MX host). Patterns used in the domain names’ string can also play a role in consolidating respondents.

Consolidation arguments were brought forward in the amended complaint. Upon formal notification of this complaint to the Respondent(s) by the World Intellectual Property Organisation (WIPO), both WIPO and the Complainant received many emails from all the different email addresses listed on the WHOIS records for the domain names.

The Respondent sent close to 100 different emails to mislead the Panel into believing that the domain names may not be under common control. In some emails, the Respondent claimed no affiliation with Mr Ubaidullah Jaafar – the orchestrator behind those registrations. Some other emails ‘agreed’ to transfer the respective domain name but never followed through.

The Panel appointed in this case, Adam Taylor, made his decision on February 27, 2024. Addressing the consolidation arguments and multiple communications received, the Panel wrote:

“(…) not only has the Respondent sent multiple communications which effectively concede the validity of the Complainant’s case (see Section 5B above), those communications were made in a manner which sought to give the misleading impression that the disputed domain names were not under common control.”

The Panel further said:

“While the multiple communications from the Respondent referred to in Section 5B above were sent from different email addresses and were signed by different people, (…) It is clear there was a single guiding hand behind this.”

The Panel did not fall for the Respondent’s attempts at misleading him and issued his decision in favour of the Complainant, agreeing to the consolidation of all 174 domain names.

Consolidation is an efficient and cost-effective approach to tackling brand infringements in the domain name space. It saves brand owners time, money, and resources. But consolidation is not easy. It is important to detect the right patterns – patterns in the domain names’ composition, content, contact details, or technical details. The more links a complaining party can make between respondents, the more chances of a successful consolidation. And this should always be substantiated with evidence. UDRP panels will reject consolidation arguments if registrants are too loosely connected to ensure fairness between parties.

Caroline Valle
Legal Services Manager

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