The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Nick Dillman, 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 June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2020. The Center appointed William R. Towns as the sole panelist in this matter on July 21, 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, established in Atlanta, Georgia in January 2013, is a leading e-commerce platform for buying and selling used cars. The Complainant is the holder of multiple United States trademark registrations for its CARVANA mark issued United States Patent and Trademark Office (USPTO as follows: United States Reg. No. 4328785, filed April 11, 2011, and registered on April 30, 2013 (covering online automobile dealership services and online financing services including automobile loans); United States Reg. No. 5022315, filed January 7, 2016, and registered on August 16, 2016; (covering automobile shipping, pickup, and delivery services); United States reg. No. 6037292, filed November 13, 2019, and registered on April 21, 2020 (stylized) (covering online dealership services; extended warranty and service contracts; shipping, pickup, and delivery services). The Complainant also has registered the mark CARVANACARE, United States Reg. No. 4971997, filed May 15, 2015, and registered on June 7, 2016 (covering extended warranty and service contracts). The Complainant CARVANA marks have been used in commerce since as early as January 2013. The Complainant has realized substantial growth in sales through its website at “www.carvana.com”, and currently operates in more than 140 markets. In the year 2019 alone, the number of used vehicles sold by the Complainant to retail customers surpassed 175,000 cars, with used vehicle sales revenues exceeding USD 3 billion. The Complainant’s website averages more than 5 million unique visitors monthly. The Respondent registered the disputed domain name The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s CARVANA mark, observing that the disputed domain name incorporates the Complainant’s mark in its entirety. The Complainant asserts that the disputed domain name is identical to the Complainant’s CARVANA mark aside from the word “virtual”, which the Complainant describes as descriptive of the Complainant’s core business. The Complainant maintains that this descriptive term does not obviate confusion. According to the Complainant, Internet consumers are likely to be misled into visiting virtual locations when encountering the confusingly similar domain name. The Complainant emphasizes that it operates as an online business. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has not been authorized by the Complainant to use the disputed domain name, and that the Complainant’s CARVANA mark is well known. The Complainant maintains that the Respondent has not been commonly known by the disputed domain name, and has neither used nor made demonstrable preparations to use the dispute disputed domain name in connection with a bona fide offering of goods or services. The Complainant further observes that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant contends that the Respondent registered and is using the disputed domain name for the improper purpose of trading on the Complainant’s goodwill to confuse, mislead, deceive and divert customers, and is intentionally tarnishing and diluting the Complainant’s valuable and well-known CARVANA mark. The Complainant insists that CARVANA is an invented English word that third parties would not legitimately choose other than to create a false impression of association with the Complainant. The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent created the disputed domain name to trade on the reputation and goodwill of the Complaint and the Complainant’s CARVANA marks for financial gain, diverting Internet users from the Complainant’s primary website, away from the Complainant’s CARVANA brand services, and towards the Respondent’s website. The Complainant submits that such conduct constitutes bad faith under the Policy. The Complainant submits that the disputed domain name registered by the Respondent wholly incorporates the Complainant’s CARVANA marks. According to the Complainant, the Respondent is passively holding a parked page featuring content such as “website coming soon” and “[P]lease check back soon to see if the site is available.” The Complainant represents that the Respondent has no legitimate trademark or intellectual property rights in the disputed domain name or in any similar marks or names, which the Complaint contends further demonstrates the Respondent’s bad faith in adopting and using the disputed domain name. The Complainant further observes that where a domain name is obviously connected to a particular product or service to which the registrant is found to have no connection, UDRP panels have found registrants “guilty of opportunistic bad faith.” B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this instance, the Complainant’s CARVANA mark is clearly recognizable in the disputed domain name.2 The inclusion of the term “virtual” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Generic Top-Level domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s CARVANA mark. The Respondent notwithstanding has registered the disputed domain name, which incorporates the Complainant’s CARVANA mark in its entirety. The disputed domain name resolves to parked page advertising “website coming soon” and soliciting Internet visitors to “check back soon to see if the site is available.” Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed domain name in connection with a bona fide offering of goods or services; or (ii) 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. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes based on the record in this case that the Respondent was aware of the Complainant and had the Complainant’s distinctive and well-known CARVANA mark in mind when registering the disputed domain name. In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s well-known CARVANA mark in mind when registering the disputed domain name. The Panel concludes that the Respondent intentionally is using the disputed domain name to attract Internet users to the Respondent’s “coming soon” website, in all likelihood seeking to exploit and profit from the Complainant’s trademark rights. In addition, even if such “coming soon” website was to be considered a non-active website, the Panel finds that the Respondent’s non-use of the disputed domain name would not preclude a finding of bad faith registration and use in the circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. Considerations that supported a finding of bad faith in the Telstra caseare present in this case as well. The Complainant’s CARVANA mark is distinctive and well known. As previously noted, it is clear beyond cavil that the Respondent would have been aware of the Complainant’s CARVANA mark when registering the disputed domain name. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain names could be put by the Respondent. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name William R. Towns 1 See WIPO Overview 3.0, section 1.7. 2 See WIPO Overview 3.0, section 1.8 and cases cited therein. 3 Id. 4 See WIPO Overview 3.0, section 1.11.
Sole Panelist
Date: July 26, 2020
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