Thursday , June 8 2023

Wow: judge orders to stop using its domain name

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

Screenshot of website

A judge has ordered Canvas to stop using

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 was known as Jumpstart until it rebranded last year after acquiring 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. is a diversity recruiting platform. Instructure argues that, because people use its platform to showcase their work to employers, 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 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 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 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.

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About Andrew Allemann

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