Complainant is Carvana, LLC, United States of America (the “United States” or “U.S.”), represented by Bryan Cave Leighton Paisner LLP, United States.
Respondent is Bernard Alvey, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2019. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 31, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant Carvana Inc. operates an e-commerce platform for consumers buying and selling used cars in the United States, where it operates in more than 130 markets and, additionally, operates vending machines in a number of American cities, including Charlotte, Nashville, and Orlando. Complainant was established in 2013. In the first half of 2019, 80,000 cars were sold through Complainant’s platform on its website at “www.carvana.com”. This domain name averages 4 million unique visitors per month. Complainant is the proprietor of trademark registrations in the United States, namely: - United States registration No. 4328785 for CARVANA (word mark), registered on April 30, 2013, for services in classes 35 and 36; The disputed domain names were registered by Respondent on May 16, 2016. The disputed domain names Complainant’s contentions may be summarized as follows. Under the first element, Complainant alleges it is the leading e-commerce platform for buying and selling used cars. Complainant promotes and renders its online automobile dealership services and online automobile financing services throughout the United States under its well-known CARVANA marks (the “Marks”) and through its primary website at “www.carvana.com”. Respondent’s disputed domain names each incorporate Complainant’s Marks in their entirety, except that each adds the name of a popular U.S. city to the Marks, which creates domain names that are confusingly similar to the Marks. Since Complainant’s customers are online they are more likely to be misled into visiting virtual locations by the use of confusingly similar domain names. Under the second element, Complainant alleges that it is able to make a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not in any was associated with Complainant and has neither sought nor received permission to use Complainant’s Marks, which are well-known throughout the United States. Respondent is not commonly known by the Marks. The disputed domain names consist of the Marks and names of U.S. cities, thereby luring consumers to an imposter’s site for commercial gain. Respondent is not making any legitimate non-commercial use of the domain names, rather, Respondent has adopted and is using the disputed domain names incorporating the Marks to mislead consumers and tarnish and dilute Complainant’s Marks. The CARVANA Mark is an invented term and it is improbable that Complainant has legitimately chosen this name. Under the third element, Complainant alleges that the disputed domain names have been registered and are being used in bad faith. The disputed domain names are plainly designed to trade on the reputation and goodwill of Complainant and its Marks for financial gain, namely, to divert users away from Complainant’s website to generate traffic and sales commissions. Respondent’s use of the disputed domain names as a parked page or for a commercial website that bears no relation to the disputed domain names. Several of the disputed domain names resolve to pages that offer the disputed domain names for sale, indicating the disputed domain names were acquired for the purpose of selling them for a price exceeding the registration costs, which violates the Policy. Respondent has no legitimate rights in the disputed domain names or any similar marks or names. Respondent has previously registered numerous domain names incorporating the trademarks of various vehicle companies, demonstrating a pattern of such conduct. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the supported contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the domain names; and (iii) Respondent has registered and is using the domain names in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the Marks, through United States trademark registrations and longstanding use of the Marks, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s Marks with the disputed domain names, the Panel finds that each of the disputed domain names wholly incorporate the Marks, and are therefore confusingly similar to Complainant’s Mark. In particular, the Panel finds that the addition of the names of U.S. cities does not prevent a finding of confusing similarity, since the Marks are readily recognizable within the disputed domain names (see WIPO Overview 3.0, section 1.8, and cases cited thereunder). It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain names does not prevent the disputed domain names from being confusingly similar to Complainant’s Marks (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the Marks with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the disputed domain names. The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the disputed domain names. The nature of the disputed domain names (comprising Complainant’s Marks and names of U.S. cities) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the disputed domain names, the burden of production shifts to Respondent (see, for example, L’Oréal v. Zhao Jiafei,WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain names. The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the domain names in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds that the evidence in the record demonstrates that Respondent chose the disputed domain names deliberately for the purpose of attempting to create an association with Complainant. Complainant’s rights in at least one of the Marks predate the registration of the disputed domain names. The Marks are distinctive in respect of the services for which they are registered and used. The disputed domain names contain Complainant’s Marks in their entirety with the addition of names of U.S. cities, which do not distinguish them from the Marks and rather confirm the impression that the disputed domain names are intended to disrupt Complainant’s ability to register its own domain names with reference to those locations. In particular, three of the disputed domain names reference cities in which Complainant operates vending machines. There can be no doubt that Respondent chose the disputed domain names in full awareness of Complainant’s Marks. Respondent has engaged in a pattern of conduct by registering a number of domain names containing Complainant’s Marks with the addition of a geographic term. Moreover, Respondent has engaged in identical behavior in at least one previous UDRP case (Bob Stallings Hyundai, Inc. d/b/a Genesis of Dallas v. Bernard “Chip” Alvey,WIPO Case No. D2019-1514). This falls within the type of circumstances indicative of bad faith under paragraph 4(b)(ii) and acknowledged by previous UDRP panels (see, for example, WIPO Overview 3.0 section 3.1.2 and cases cited thereunder). Furthermore, in the view of the Panel, the passive holding of the disputed domain names also supports a finding of bad faith, particularly in light of Respondent’s failure to file a substantive response to the Complaint and the implausibility of any good faith use to which the disputed domain names may be put. Some, not all, of the disputed domain names are parked on pages in which they appear available for purchase. There is no evidence in the record that Respondent has actively offered the disputed domain names for sale. However, taken together, the Panel finds that the circumstances indicate that the disputed domain names were registered and used in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, Ingrīda Kariņa-Bērziņa
- United States registration No. 5022315 for CARVANA (word mark), registered on August 16, 2016, for services in class 39;
- United States registration No. 4971997 for CARVANACARE (word mark) registered on June 7, 2016, for services in class 36.
Sole Panelist
Date: November 14, 2019
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