The judge grants a preliminary injunction which will force Canvas to stop using its precious domain name.
U.S. District Judge Dale Kimball granted (pdf) a preliminary joinder request by Instructure, Inc., ordering Canvas to cease using its Canvas.com domain name.
Canvas was known as Jumpstart until it was renamed last year after it acquired Canvas.com under a capital lease. After changing brands, Instructure complained of infringing its trademark for Cloth. Instructure offers a learning and portfolio management platform called Canvas. Canvas.com is a diversity recruitment platform. Instructure claims that because people use its platform to showcase their work to employers, Canvas.com is damaging its brand.
Judge Kimball seems to agree. His order is almost entirely on Instructure’s side, and he said he believes the short-term damage to Instructure outweighs the damage Canvas will face with the rebranding, even temporarily.
In this case, Instructure has been marketing and selling its services under the Canvas brand for over a decade, investing tens of millions of dollars promoting its products under its brand during that time. Allowing Canvas Tech to relinquish the goodwill and reputation that Instructure has built for itself would be a serious detriment to Instructure. Additionally, Instructure does not ask Canvas Tech to stop promoting and selling its services. Instructure is only asking Canvas Tech to stop using the canvas brand – a brand that Canvas Tech has branded for only a few months. While it is true that granting a preliminary injunction against Canvas Tech would force Canvas Tech to change its name, at least temporarily, the court concludes that this damage is minimal compared to that of Instructure. Thus, balancing the difficulties here promotes Instructure.
Changing a company’s domain name is a big undertaking and involves a carefully planned transition. This requires careful management of URLs for search rankings and long-term transition of email addresses. But the judge ordered Canvas to stop using canvas.com almost immediately:
Defendant, and each of its respective officers, agents, servants, employees and lawyers, and any other person who is in concert or active participation with any of them,
ARE HEREBY PRELIMINARILY ENDED AND RESTRICTED pending the final hearing and decision in this action to (a) Continue to sell, advertise or promote
any product or service using the Canvas Mark, or any other mark that is confusing with the Canvas Mark; and (b) continue to use, advertise, promote or redirect any
other websites at the domain www.canvas.com.
Within 15 days of the date of this order, the defendant must remove or destroy all signs, posters, images, billboards, advertisements or other printed matter that displays the
Canvas brand in any way;
Within 15 days of the date of this Order, the Respondent will delete all internet messages, images or other material (including, but not limited to, on the Respondent’s websites,
Facebook, Twitter, Instagram, YouTube, and other social media pages) that display the Canvas brand in any way.
Another worrying sign for Canvas (and perhaps for the company that leases 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 named registrant identified in the domain report for canvas.com have changed. If the new registrar and domain name holder are really new entities that have entered into a new contract, then this would be a re-registration during the period when Instructure’s web mark became famous.