Diversity recruiting site Canvas.com has been ordered by a U.S. district judge to drop the use of the domain name over a trademark dispute.
Learning management platform Instructure claims the domain name Canvas.com and its logo contain elements that conflict with Instructure’s Canvas product and line of business.
Canvas Tech reportedly says they will be appealing the ruling.
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 request for a preliminary injunction was granted.
Founded in 2017, diversity recruiting platform, 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 to Canvas Tech and leased the Canvas.com domain:
This did not sit well with the online learning software company Instructure, which sued Canvas Tech (Jumpstart) alleging that the latter’s name and use of canvas.com infringed on Instructure’s trademark.
Instructure had initially started out with its online learning management system (LMS) called Canvas:
However, court documents seen by Domain Name Wire reveal, over subsequent years, Instructure’s product capabilities expanded to allow users to showcase their resumes, professional references, and keep tabs on companies as well as new job openings.
In that regard, the documents explain, the diversity job board Canvas, and its Canvas.com domain could be perceived by some to conflict with Instructure’s business activities and product offerings.
U.S. District Court of Utah Judge Dale Kimball largely sided with Instructure in the trademark dispute and ruled in their favor.
In his ruling, the judge concludes that the harm caused to Instructure due to Jumpstart’s rebranding and use of canvas.com surpasses the inconvenience faced by Canvas (Jumpstart) to undergo another rebranding, even if temporary.
The judgment maintains that the “balance of hardships” in this infringement case favors Instructure:
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.
But if Canvas Tech is forced to undergo another rebranding, even temporarily, it could cause more hardship than thought by the judge.
By switching domains, the company would be forced to rebuild its web presence and SEO, which can be a difficult process that takes a long time, let alone strategizing brand presence.
This preliminary injunction, if sustained at the final judgment, would mean Canvas would have to permanently rebrand itself and ditch canvas.com for another domain name.
The domain change alone can prevent Canvas from ranking in search results.
Instructure repeatedly turned down canvas.com sale offers
It is worth noting that the Canvas.com domain itself was never owned or operated by Instructure.
Although Jumpstart leased Canvas.com domain after changing its name in 2021, in years preceding the event, Instructure was approached numerous times by the domain’s owner offering to sell canvas.com to Instructure.
These sales requests were repeatedly turned down by Instructure.
“Instructure does not own the www.canvas.com domain,” states 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 turned down the offer because it did not like the terms and felt that the price was unreasonably high.”
“BHG approached Instructure about the domain again in 2013 and 2016. Each time, Instructure declined to purchase the domain.”
Sometime between September and October of 2020, BHG and Instructure attempted further negotiations regarding the canvas.com domain.
And, once again, Instructure declined to pay the asking price set by BHG.
But, Instructure did caution BHG that “it should not sell the domain to anyone operating in similar channels with similar services to Instructure’s Canvas-branded platforms.”
By May 2021, Jumpstart had already entered into a “lease-to-own” deal with BHG and acquired rights to operate canvas.com.
The district court’s ruling made this week requires Canvas Tech to restrain from using the canvas.com domain immediately. Additionally, it requires the diversity job board to “remove or destroy all signs” and artifacts that could infringe on Instructure’s trademark within 15 days of the order.
As of today, however, Canvas (Jumpstart) is continuing to operate canvas.com and has reportedly stated it will appeal the ruling.
