The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Ferel Demis, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 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 August 10, 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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on September 16, 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 a publicly listed leading e-commerce platform for buying and selling used cars and promotes and renders its online automobile dealership services and online automobile financing services throughout the United States. It owns various trade mark registrations for its CARVANA mark, including >United States trade mark registration 4328785 filed on April 11, 2011 and registered on April 30, 2013. The Respondent (initially identified as a privacy service), based in Germany, registered the disputed domain name on June 6, 2020. It resolves to a website that appears to be offering vehicles for sale under the Complainant’s CARVANA mark. This website notes that “With over 15 years of experience in the automotive field in USA, we are now in Europe for our clients[…]”, which suggests that the Respondent has aimed the site at European Internet users. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights in the CARVANA mark as noted above and that the disputed domain name wholly incorporates this mark and is therefore confusingly similar to it. The Complainant says that the addition of “-cvna” which is identical to the Complainant’s stock ticker symbol only heightens the potential for confusion and is intended to lure Internet users to the Respondent’s website. The Complainant submits that the Respondent is not in any way associated with it and has never sought nor received authorization or receive a licence to use the Complainant’s CARVANA trade mark which the Complainant asserts is well known as recognized in a recent case (see Carvana, LLC v. Nick Dillman, WIPO Case No. D2020-1483). The Complainant submits that there is no reason to believe that the Respondent has registrations of any kind or legitimate rights in the CARVANA mark. It says that the Respondent is not making any legitimate noncommercial use of the disputed domain name but is rather using it to lure Internet users to its website at which it is using the Complainant’s CARVANA mark in order to impersonate the Complainant. It notes that the Respondent’s website at the disputed domain name falsely states that it is affiliated with the Complainant and offers vehicles for sale under the Complainant’s name. There can be no doubt says that the Complainant that the Respondent’s use of the disputed domain name is purely commercial and is designed to confuse unsuspecting customers into falsely believing that the disputed domain name is affiliated with the Complainant. As far as bad faith is concerned, the Complainant notes that its mark is an invented English mark that is distinctive and that is also very well known. It says that the disputed domain name is plainly designed to trade on the reputation and goodwill of the Complainant and of its CARVANA mark for financial gain and that the disputed domain name is used to divert potential users (a) away from the Complainant’s primary, legitimate website at “www.carvana.com”, (b) away from the Complainant’s authentic Carvana brand services, and (c) toward the Respondent’s fraudulent website which impersonates the Complainant. The Complainant asserts that the Respondent’s website at the disputed domain name is plainly fraudulent in that it: (i) prominently displays the Complainant’s word and design marks on the home page and on every subpage; (ii) explicitly states that it is an affiliate of the Complainant, stating “With over 15 years of experience in the automotive field in USA, we are now in Europe for our clients […]”; and (iii) purports to offer an e-commerce platform for sale of vehicles, which is the exactly the same service offered by the Complainant. In short it says that the Respondent’s use of the disputed domain name in this way is illegal and improper under the Policy and that its use of a privacy registration service is additional evidence of its bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns United States trade mark registration 4328785 filed on April 11, 2011 and registered on April 30, 2013 for its CARVANA mark. The disputed domain name wholly incorporates this mark and is therefore confusingly similar to it. The addition of “-cvna”, which is identical to the Complainant’s stock ticker symbol, before the Top-Level Domain does not detract from this finding. As a result, the Panel finds that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent is not in any way associated with it and has never sought nor received authorization or a licence to use the Complainant’s CARVANA trade mark. The Complainant has also asserted that there is no reason to believe that the Respondent has registrations of any kind or legitimate intellectual property rights in the CARVANA mark. It also maintains that the Respondent is not making any legitimate noncommercial use of the disputed domain name but is rather using it to lure Internet users to its website at which it is using the Complainant’s CARVANA mark in order to impersonate the Complainant. It notes that the Respondent’s website at the disputed domain name falsely states that it is affiliated with the Complainant and offers vehicles for sale under the Complainant’s name. In summary the Complainant has submitted that the Respondent’s use of the disputed domain name is purely commercial and is designed to confuse unsuspecting customers into falsely believing that the disputed domain name is affiliated with the Complainant. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case and for this reason and also as set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on June 6, 2020. This is many years after the Complainant commenced business and registered its first trade mark for CARVANA in the United States. The Panel notes that the CARVANA mark is a coined term and as such is very distinctive. In addition, a United States based panel in Carvana, LLC v. Nick Dillman, supra recently found that the CARVANA mark was well known, at least in that jurisdiction. Taking these factors into account and considering the similarities in the content of the website at the disputed domain name with the Complainant’s website and the Respondent’s use of the Complainant’s logo mark on that site, it seems to the Panel that the Respondent, although based in Germany was very likely well aware of the Complainant’s mark and business when it registered the disputed domain name and did so in bad faith. It is apparent that the Respondent has attempted to use various elements from the Complainant’s website on its own website at the disputed domain name in order to confuse Internet users into thinking that its business is the European branch of the Complainant’s business. This is a particularly brazen attempt to use the disputed domain name to masquerade as the Complainant and to trade off the goodwill and reputation attaching to the Complainant’s CARVANA mark. Such conduct amounts on its own to use of the disputed domain name in bad faith. In terms of the Policy, the Respondent has intentionally attempted to attract Internet users to its website in order to induce them into believing that the website is owned by the Complainant or is somehow affiliated to or endorsed by the Complainant in order to drive traffic to the website. This conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy which is evidence of registration and use of the disputed domain name in bad faith. The Respondent’s use of a privacy service to mask its true identity is a further indicator of the Respondent’s bad faith. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element 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 Alistair Payne
Sole Panelist
Date: September 28, 2020
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