Domain Name Wire | Domain Name News

Domain Name Industry News

Featured Domains

register.to

Judge issues Order to Show Cause in Canvas.com case

by — Policy & Law 3 Comments

If the appeals court denies request, Canvas might abandon the Canvas name entirely.

Picture of scales with the word "lawsuit" imposted on top in a box

U.S. District Judge Dale Kimball has granted an Order to Show Cause after recruiting site Canvas failed to stop using the brand Canvas after the judge’s deadline.

Kimball granted a preliminary junction on January 5 in favor of Instructure (NYSE: INST), a company that says Canvas is infringing its trademark for Canvas. He gave Canvas 15 days to cease using the brand, delete all online posts using the Canvas brand, and stop using the canvas.com domain name.

That deadline was January 20, and Canvas is still using the brand and domain name.

I suspect Canvas is weighing the costs of ignoring the injunction while it lines up its alternatives.

First, Canvas hopes to get a reprieve from the 10th Circuit Court of Appeals. It has asked the appeals court to stay Kimball’s injunction and the court is hearing the request on an expedited basis. So, if the appeals court rules in its favor, it can continue to use Canvas.com.

Meanwhile, I suspect the company is lining up alternative brands if the appeals court rules against it. Switching brands is hard enough, but switching back to its old brand (Jumpstart.me) and then back to Canvas again if it prevails in the original suit would be even more challenging. If the appeals court denies its claim, then its best path might be to switch to an entirely new brand (after doing extension trademark checks, of course).

Yesterday, a lawyer for Canvas wrote to a lawyer for Instructure, saying that the company has been “working diligently” to comply with the order and rebrand to a new trademark. He also wrote:

As soon as we know when Canvas can cease use of CANVAS and launch a new brand, we will immediately let you know. At present, however, we do not have a specific date when the rebrand will be implemented, but the hard work that our client has been doing suggests that it will be done as soon as is reasonably practical.

 

Canvas is still using Canvas.com after court deadline passes

by — Policy & Law 3 Comments

Company is hoping an appeals court will grant a stay.

Screenshot of Canvas.com website

Canvas is still using Canvas.com, even though a court-ordered deadline to rebrand has passed.

Diversity recruiting platform Canvas is still using the Canvas brand and Canvas.com domain name after a court deadline forcing a change passed.

U.S. District Judge Dale A. Kimball granted a preliminary junction on January 5 in favor of Instructure (NYSE: INST), a company that says Canvas is infringing its trademark for Canvas. He gave Canvas 15 days to cease using the brand, delete all online posts using the Canvas brand, and stop using the canvas.com domain name.

On January 19, he denied Canvas’ request for a stay and reiterated his January 20 deadline.

It’s now January 24, and Canvas hasn’t changed its brand.

It appears that Canvas is waiting for the 10th Circuit Court of Appeals to grant it a reprieve. On January 20, the company filed an Emergency Motion to Stay Entry of Preliminary Injunction Pending Appeal with the appeals court. The company reiterated its plea that changing its brand and domain name would devastate the business, making any future decisions in its favor moot.

The appeals court is asking Instructure to respond by January 26.

It makes sense that Canvas would wait for the appeals court to rule, given the short timeframe and the repercussions of changing its domain name and brand.

Judge reiterates demand that Canvas.com stop using its domain…tomorrow!

by — Policy & Law 9 Comments

Canvas will have to switch domain names by tomorrow.

Picture of a male judge with a white wig swinging a baseball bat

Not the actual judge.

Perhaps you can forgive United States District Judge Dale A. Kimball for not understanding what goes into changing a web platform’s domain name. But the engineers at Canvas’ headquarters probably won’t.

Today, Kimball denied (pdf) a request by Canvas to stay an injunction he approved against the company. The denial means that Canvas has to rebrand its company and change domain names by 15 days after he made the injunction — tomorrow.

Kimball thinks it’s no big deal. If it ends up winning the case, it will just be a “temporary rebrand.”

He notes that Canvas already rebranded last year from Jumpstart and changed its domain from Jumpstart.me to Canvas.com. Sure, it took six months, but how hard can it be just to flip the switch back?

In addition, Canvas Tech has rebranded before – when it changed from Jumpstart to Canvas. Although that initial rebrand took six months, it is unlikely to take Canvas Tech that
long again. Canvas Tech’s mission and services this time will, presumedly, stay the same. All that must change is the branding itself. Since Canvas Tech still owns and retains the website and infrastructure for Jumpstart, the court is unconvinced that Canvas Tech will need much time at all to temporarily rebrand.

Second, the court believes that Canvas Tech’s claimed harm to its customers is exaggerated. Presently, Canvas Tech’s www.jumpstart.me domain is used by Canvas Tech to
automatically redirect users to www.canvas.com. To comply with the preliminary injunction, Canvas Tech could use the www.jumpstart.me domain again, without redirecting the users.
Canvas Tech can also announce the new rebrand through a post on its platform.

Let’s look at that last sentence again: Canvas Tech can also announce the new rebrand through a post on its platform.

Oh, you mean the platform hosted at Canvas.com?

Hopefully, the judge won’t split hairs over using Canvas.com. At a minimum, the business needs to be able to redirect it to another domain and forward emails destined for the @canvas.com email addresses. Otherwise, its business will be irreparably harmed (if you believe that changing domains tomorrow won’t irreparably harm the company.)

I’m not a judge or a lawyer. Perhaps Instructure, the company that filed the dispute, has a good case. It seemed marginal to me, but maybe the evidence will show otherwise. Still, it baffles me that a judge would unilaterally force a company to stop using its domain within 15 days in these circumstances. When we look at UDPR, we complain that the panelists can only choose to approve or deny a transfer. There’s nothing in between, like requiring a domain owner to put a note on a page that says the companies are not affiliated as a stopgap during a dispute like this.

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

by — Policy & Law 13 Comments

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.

Domain Name Wire | Domain Name News