Diversity recruiting site Canvas.com has been ordered by a U.S. District Judge to drop the use of the domain name in trademark litigation.
The Instructure learning management platform claims that the Canvas.com domain name and logo contain material that conflicts with Instructure’s Canvas product and line of business.
Canvas Tech has reportedly said it will appeal the decision.
Canvas vs. canvas
This week, a U.S. District Court sided with Instructure Inc., ordering Canvas Tech to drop the use of the Canvas.com domain name, after Instructure’s preliminary injunction request was brought down. been granted.
Founded in 2017, the recruitment platform for diversity, Jumpstart was launched to help companies hire diverse teams and to connect candidates, especially students, with potential employers.
In July 2021, however, Jumpstart rebranded itself as Canvas Tech and leased the Canvas.com domain:
This did not suit the online learning software company Instructure, which sued Canvas Tech (Jumpstart) alleging that the latter’s name and the use of canvas.com infringes the Instructure trademark.
Instructure initially started with its online learning management system (LMS) called Canvas:
However, the court documents seen through Domain name feed reveal, over the next few years, the capabilities of Instructure’s products expanded to allow users to showcase their resumes, job references, and keep tabs on companies as well as new vacancies.
In this regard, the documents explain, the diversity job site Canvas and its domain Canvas.com could be perceived by some to be in conflict with Instructure’s business activities and product offerings.
Utah District Court Judge Dale Kimball largely sided with Instructure in the trademark dispute and ruled in their favor.
In his decision, the judge concludes that the damage caused to Instructure due to the rebranding and use of canvas.com by Jumpstart exceeds the inconvenience encountered by Canvas (Jumpstart) to undergo another rebranding, even temporary. .
The judgment maintains that the “balance of hardships” in this infringement case favors Instructure:
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 finds that this damage is minimal compared to that of Instructure. Thus, balancing the difficulties here promotes Instructure.
But if Canvas Tech is forced to undergo another rebranding, even temporarily, it could cause more difficulty than the judge thought.
By changing domains, the business would be forced to rebuild their web presence and SEO, which can be a difficult and time-consuming process, let alone brand presence strategy.
This preliminary injunction, if upheld in the final judgment, would mean that Canvas would have to rename itself permanently and abandon canvas.com for another domain name.
Changing the domain alone can prevent Canvas from ranking in search results.
Instructure has repeatedly refused offers to sell from canvas.com
It should be noted that the Canvas.com domain itself has never been owned or operated by Instructure.
Although Jumpstart leased the Canvas.com domain after changing its name in 2021, in the years leading up to the event Instructure was repeatedly approached by the domain owner offering to sell. canvas.com to Instructor.
These sales requests were repeatedly refused by Instructure.
“Instructure does not own the domain www.canvas.com,” says the preliminary injunction.
“Branded Holding Group, LLC (” BHG “) has owned the canvas.com domain since June 6, 1997. In 2012, BHG offered to sell the canvas.com domain to Instructure.”
“Instructure declined the offer because they didn’t like the terms and felt the price was unreasonably high.”
“BHG contacted Instructure again about the domain in 2013 and 2016. Each time, Instructure refused to purchase the domain. “
Between September and October 2020, BHG and Instructure attempted new negotiations regarding the canvas.com domain.
And, once again, Instructure refused to pay the asking price set by BHG.
But, Instructure warned BHG that “it should not sell the domain to anyone operating in similar channels with services similar to Instructure’s Canvas branded platforms.”
As of May 2021, Jumpstart had already entered into a “capital lease” agreement with BHG and acquired the rights to use canvas.com.
The district court ruling this week requires Canvas Tech to immediately refrain from using the canvas.com domain. Additionally, it requires the diversity job site to “remove or destroy all signs” and artifacts that could infringe Instructure’s trademark within 15 days of ordering.
To this day, however, Canvas (Jumpstart) continues to operate canvas.com and has reportedly said it will appeal the decision.
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