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Wow: judge orders Canvas.com to stop using its domain name

Judge grants preliminary injunction that will force Canvas to stop using its valuable domain name.

Screenshot of Canvas.com website
A judge has ordered Canvas to stop using canvas.com.

U.S. District Judge Dale Kimball has granted (pdf) a request for a preliminary junction by Instructure, Inc., thereby ordering Canvas to stop using its domain name Canvas.com.

Canvas was known as Jumpstart until it rebranded last year after acquiring Canvas.com in a lease-to-own deal. After changing its brand, Instructure complained that it was violating its trademark for canvas. Instructure offers a learning management and portfolio platform called Canvas. Canvas.com is a diversity recruiting platform. Instructure argues that, because people use its platform to showcase their work to employers, Canvas.com is infringing its trademark.

Judge Kimball seems to agree. His order sides almost entirely with Instructure, and he said he believes the near-term harm to Instructure outweighs the damage Canvas will face rebranding, even if just temporarily.

In this case, Instructure has marketed and sold its services under the canvas mark for over a decade – investing tens of millions of dollars in promoting its products under its mark during this time. To allow Canvas Tech to trade off of the goodwill and reputation that Instructure built would be a significant harm to Instructure. Further, Instructure is not requesting that Canvas Tech no longer promote and sell its services. Instructure is only requesting that Canvas Tech stop using the canvas mark – a mark by which Canvas Tech has been branded for just a few months. While it is true that granting a preliminary injunction against Canvas Tech would force Canvas Tech to rebrand, at least temporarily, the court finds that this harm is minimal in comparison to Instructure’s. Thus, the balance of hardships here favors Instructure.

Changing a company’s domain name is a big undertaking and involves a carefully planned transition. It require meticulous URL management for search rankings and a long-term transition of email addresses. But the judge has ordered Canvas to stop using canvas.com almost immediately:

Defendant, and each of its respective officers, agents, servants, employees, and attorneys, and any other persons who are in active concert or participation with any one of them,
ARE HEREBY PRELIMINARILY ENJOINED AND RESTRAINED pending the final hearing and determination in this action from (a) Continuing to sell, advertise, or promote
any product or service using the Canvas Mark, or any other mark that is confusingly similar to the Canvas Mark; and (b) Continuing to use, advertise, promote, or redirect any
other websites to the www.canvas.com domain.

Within 15 days of the date of this Order, Defendant shall remove or destroy all signs, posters, pictures, billboards, advertisements, or other printed matter that displays the
Canvas Mark in any manner;

Within 15 days of the date of this Order, Defendant shall remove all internet posts, pictures, or other material (including but not limited to on Defendant’s websites,
Facebook, Twitter, Instagram, YouTube and other social media pages) that display the Canvas Mark in any manner.

In another worrying sign for Canvas (and perhaps the company leasing the domain to Canvas), the judge seems to be siding with courts that believe the Anti-Cybersquatting Protection Act (ACPA) “resets the clock” when a domain name is transferred to a new owner.

This Domain Report shows that between March 15, 2021 and April 1, 2021, the named registrar and the named registrant identified in the domain report for canvas.com changed. If the new listed registrar and registrant are truly new entities that entered into a new contract, then that would be a re-registration during the time in which Instructure’s canvas brand has been famous.

Update: Canvas is appealing. More to come.

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  1. John says

    Hahaha. Good!! The “proposition” of this company diisgusts me. Hire by a certain ethinicity or gender, are you having a laugh?

  2. J.R. says

    Another despicable ruling. post-France*com.

    hen the idea of a new setting/re-registration is utter non-sense. This is why domains most achieve the same status of real property protected under the U.S. Constitution.

    Maybe more corporations will start respecting domain speculator rights, now that corporations are seeing activist judges can take their digital properties away through bad interpretations of Trademark law.

    Canvas*com should appeal this ruling.

    All that brand equity washed down the drain, but it looks like they can at least keep the Canvas*com URL to sell to another party.

  3. J.R. says

    Another despicable ruling. post-France*com.

    The idea of a new setting/re-registration is utter non-sense. This is why domains must achieve the same status of real property protected under the U.S. Constitution.

    Maybe more corporations will start respecting domain speculator rights, now that corporations are seeing activist judges take their digital properties away through bad interpretations of Trademark law.

    Canvas*com should appeal this ruling.

    All that brand equity washed down the drain, but it looks like they can at least keep the Canvas*com URL to sell to another party or can they?

    • Mike says

      Fully agree. This is a result of frustration of the big money, “chosen ones” , authorities etc, who are kind of “p’d off” that we ordinary folks have got something that “they” want
      and cannot get for free.

      They don’t like that. So of course they now seek to change the rules of game to put themselves in a position to take it for free.

      It will be interesting to see what happens when these large corps get hoisted by their own petard.

  4. Greg78 says

    “The idea of a new setting/re-registration is utter non-sense. This is why domains must achieve the same status of real property protected under the U.S. Constitution.”

    US courts see domains as contracts, not as property.

    https://www.lexology.com/library/detail.aspx?g=016ee90b-496e-4a68-858a-956181932060

    “A recent US decision out of Virginia (In re Alexandria Surveys Int’l, LLC, 13-CV-00891 (E.D. Va. Nov. 7, 2013)) has come to a different conclusion in a bankruptcy matter. In this case, the court decided that “a domain name registrant acquires the contractual right to use a unique domain name for a specified period of time . . . a domain name is not personal property but rather ‘the product of a contract for services.’” [Emphasis added]”

    • J.R. says

      Actually, there is a split among the federal courts on the property issue. In fact, the Ninth Circuit views domains as property, see the infamous Sex.com case. Depending on the Court, domain names are considered intangible property or contract for services.

      Until the U.S. Supreme Court makes a final ruling on the issue, there will remain a split.

      The Booking*com, France*com and now Canvas*com cases, mean it is only a matter of time before SCOTUS rules on the status of URLs as property or contract for service.

      • Mike says

        J.R. Would it not be possible to “arrange” “A” Case that then goes right the way to Supreme Court to “make” the final ruling ?. I mean, I probably have a domain you have rights in, and I of course accept your contention that domains ARE property. Sealed !.

        • J.R. says

          @Mike

          I was really hoping France*com would have been that test case, as the property protection issue was a key component.

          I suspect with the Canvas*com case, could be the test case many have been waiting for if they fight the case on appeal.

          They have the resources and a larger platform to bring media attention to the duplicity happening with admin domain property theft.

          I agree with South Carolina Law Professor Ned Snow that ACPA is unconstitutional.

          It’s only a matter of time before the right case comes along to be heard before SCOTUS.

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