The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Cline Davis, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 25, 2020. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on April 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2020. The Respondent contacted the Center on April 20, 21, and 28, 2020, but did not submit a formal response. Accordingly, the Center notified the Parties the Commencement of Panel Appointment on May 26, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 3, 2020. 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 The Complainant is an Arizona limited liability company with its principal place of business in Tempe, Arizona, United States. Founded in 2012, the Complainant became a publicly traded company on the New York Stock Exchange in April 2017. The Complainant is the leading e-commerce platform for buying and selling used cars in the United States. It operates as an online-only used car dealer that allows customers to shop, finance, and sell or trade-in cars through its website at “www.carvana.com”. Customers have their purchased vehicles delivered to them throughout the United States or collect them at one of the Complainant’s car vending machines, currently located in 26 cities. The Complainant’s business is advertised nationally and has grown rapidly since launching in January 2013. In 2019, the Complainant sold more than 175,000 vehicles to retail customers, with used vehicle sales revenue exceeding USD 3 billion. The Complainant’s website averages more than 5 million unique visitors monthly. The Complainant holds several relevant trademark registrations, including United States Trademark Registration Number 4328785 (registered April 30, 2013) for CARVANA as a standard character mark. The Registrar reports that the Domain Name was created on July 13, 2018 and was registered in the name of a domain privacy service. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Cline Davis of United States, with no organization listed. It appears that the Respondent has never developed an active website associated with the Domain Name. Instead, it has been “parked for FREE, courtesy of GoDaddy.com”, as it is at the time of this Decision. That means that the Domain Name resolves to a landing page hosted by the Registrar which (a) advertises the Registrar’s services to the Domain Name owner and to the public, (b) asks “Would you like to buy this domain?” and links to another page offering to contact the current owner about selling the Domain Name (without representing whether the owner is interested in selling or at what price), and (c) lists “related links” to third-party advertisers (presumably pay-per-click or “PPC” advertising), which in this case are heavily skewed toward used car sales. The Respondent sent an email to the Center on April 20, 2020 saying, “[t]his matter has been resolved.” On April 21, 2020, after the Center sent instructions to the parties concerning procedures for suspension of the proceeding and reporting a settlement, the Respondent sent the Center another terse email message: “I do not own the domain. It is Carvanas to pick up. If you threaten me again I will file a lawsuit against your company.” On April 28, 2020, the Respondent sent the following message by email to the Center: “I have explained I do not own the domain name it is owned by Go Daddy it was released so you need to contact Go Daddy. I've contacted them and they have verified I did release it by [sic] it does take time to go on the market. Unless some other party has picked it up. I suggest you contact Go Daddy and purchase this domain name before another party does. As they have explained it is available. Sincerely, Cline Davis” The Respondent seems not to appreciate the fact that the Domain Name is locked with the commencement of the UDRP proceeding, and joint action is required by the parties for the Registrar to effect a transfer of the registration, which remains in the Respondent’s name. As the Registrar confirmed to the Center on April 29, 2020: “No changes have been made, the CARVANAPARTNERS.COM remains locked, and has not been cancelled.” 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name, which incorporates the CARVANA mark in its entirety, is confusingly similar to the mark and that the Respondent has no permission or other evident rights or legitimate interests to use the mark in the Domain Name. The Complainant infers bad faith on the part of the Respondent because, lacking any rights or legitimate interests, the Respondent uses a confusingly similar Domain Name to mislead Internet users as to source or affiliation and direct them to other sites for commercial gain, while advertising for sale a Domain Name that is principally of interest to the Complainant and its competitors. The Complainant cites the “passive holding” doctrine and such decisions as Hugo Boss Trade Mark Management GmBH & Co. KG, et al. v. Private Registration/George Kara,WIPO Case No. D2015-0666, arguing that, as in that case, “Respondent is passively holding the disputed domain name for a parked webpage, which prior UDRP decisions have held to be bad faith use, particularly when the disputed domain name incorporates a famous trademark.” B. Respondent The Respondent communicated with the Center as detailed in the Factual Background section above but did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name incorporates the Complainants’ registered CARVANA mark in its entirety, adding the English dictionary word “partners”, which does not avoid confusion. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. Id., section 1.11.2. The Panel concludes, therefore, that the first element of the Complaint has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent has not advanced rights or legitimate interests, and none are evident from a perusal of the record or the use of the Domain Name for a landing page advertising the Domain Name and the Registrar’s services, with PPC advertising links to third parties. The Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or … (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Complainant’s mark is a distinctive, coined term that is heavily advertised and well-known in the United States, where the Respondent is located, and the Respondent has not denied prior awareness of it. The Respondent has not offered an explanation for registering the Domain Name incorporating the mark and allowing it to be used for nearly two years now to advertise the goods and services of others, including those in competition with the Complainant. In the Panel’s view, the Registrar’s default landing page is not sufficient to demonstrate bad faith as described in the Policy, paragraph 4(b)(i), as there is no evidence of an effort to sell the Domain Name to the Complainant or a competitor for an amount in excess of relevant out-of-pocket costs. However, the landing page with PPC listings is plainly evidence of bad faith as described by the Policy, paragraph 4(b)(iv). The Domain Name incorporates the Complainant’s mark in its entirety and misdirects Internet users to other sites for commercial gain. The gain need not be the Respondent’s. While a brief period of default parking may be excusable while a registrant makes arrangements for another disposition of a domain name, ultimately the Respondent, like any other registrant, is responsible under the registration agreement for the lawful use of the Domain Name in a manner that does not infringe on the rights of others. Exploiting the Complainant’s mark for PPC advertising and to advertise the Registrar’s services, over an extended period of time, must be considered bad faith as contemplated by the Policy. The Panel finds bad faith in the registration and use of the Domain Name and concludes that the Complainant prevails on the third element of the Complaint. 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 Domain Name, W. Scott Blackmer
Sole Panelist
Date: June 4, 2020
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