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 / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names The separate Complaints were was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaints. The Center sent an email communication to the Complainant on June 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaints. The Complainant filed two separate amended Complaints on June 5, 2020, and requested consolidation of these two Complaints due to the same underlying registrant information.1 On June 8, 2020, the Center informed the Parties that the separate proceeding against the disputed domain name The Center verified that the Complaint together with the amended Complaints 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 June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2020. The Center appointed Zoltán Takács as the sole panelist in this matter on July 8, 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. Paragraph 11(a) of the Rules directs that in absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreements for the disputed domain names is English which the Panel establishes as the language of this administrative proceeding. 4. Factual Background The Complainant is a provider of automobile dealership and financial services as well as an e-commerce platform for buying and selling used cars throughout the United States. In 2019, the Complainant sold more than 175,000 vehicles to retail customers, with used vehicle sales revenue exceeding USD 3 billion. The Complainant owns a number of trademarks consisting of or comprising the word “carvana”, including the United States Trademark Registration No. 4328785 for the word mark CARVANA registered on April 30, 2013 for services of classes 35 and 36 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks. Since October 18, 2003, the Complainant owns the domain name The disputed domain names The Complainant contends that the disputed domain names wholly incorporate its CARVANA trademark and are therefore confusingly similar to it. The difference between the disputed domain names and the Complainant’s CARVANA trademark is addition of the word “car” in case of the disputed domain name The Complainant alleges the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant claims that the disputed domain names were registered and are being used in bad faith since both redirect to either websites offering automobile dealership services similar to those of the Complainant by third parties unaffiliated with the Complainant or to websites distributing malwares or undesired applications. The Complainant also contends that the Respondent has a history of registering domain names containing trademarks of third parties. The Complainant requests that the disputed domain names be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”. It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced evidence of having registered rights in the CARVANA trademark. For the purpose of this administrative proceeding, the Panel finds that the United States Trademark Registration No. 4328785 for the word mark CARVANA satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights in the CARVANA trademark, the Panel next assesses whether the disputed domain names are identical or confusingly similar to the Complainant’s trademark. According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element. According to section 1.9 of the WIPO Overview 3.0., a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The Complainant’s CARVANA trademark is clearly recognizable within the disputed domain names Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds The Complainant has never authorized the Respondent to use its CARVANA trademark in any way, and its prior rights in the CARVANA trademark precede the date of registration of the disputed domain names. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: “(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 (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The facts that disputed domain names are confusingly similar to the Complainant’s distinctive CARVANA trademark and redirect Internet users to dynamic third party websites, in particular the ones offering services competing with those of the Complainant, and as such in view of the Panel demonstrates that the Respondent knew of the Complainant’s CARVANA trademark when registering the disputed domain names. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites (or websites under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Further, the Panel finds that the Respondent has acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s CARVANA trademark by operating websites that redirect Internet users to websites offering competing services or distributing malwares or undesired applications. The disputed domain name Previous UDRP Panels have found that employing a misspelling in this way signals intention on the part of the respondent (typically corroborated by infringing website content) to confuse Internet users seeking or expecting the complainant. (See section 1.9 of the WIPO Overview 3.0.) The Respondent has been involved in a number of trademark-abusive domain name registrations (e.g., Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0018; Nationwide Mutual Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-2144; Starbucks Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1991; Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2882). This in view of the Panel demonstrate a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so, and is further indicative of the Respondent’s bad faith. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, and paragraph 4(a)(iii) of the Policy is satisfied. 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 Zoltán Takács 1 The Panel notes that paragraph 3(c) of the Rules provides that a complainant may relate to more than one domain name provided that the domain names are registered by the same domain name holder. Since the disputed domain names have been registered by the Respondent, the Panel finds that this criteria is fulfilled.
well-established rights in the CARVANA trademark.
Sole Panelist
Date: July 20, 2020
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