Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Sam Jones, 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 2, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 4, 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 Complaint. The Center sent an email communication to Complainant on September 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 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 Respondent of the Complaint, and the proceedings commenced on September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020. The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 29, 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 Complainant is the owner of registrations for the word trademark CARVANA on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 4328785, registration dated April 30, 2013, in international classes (IC) 35 and 36, covering “online dealership services featuring automobiles” and “online financing services in the field of automobile loans”, respectively, and; registration number 5022315, registration dated August 16, 2016, in IC 39, covering “shipping, pickup, and delivery services for automobiles”. Complainant is the owner of additional registrations at the USPTO for word, and word and design, CARVANA-formative trademarks. Complainant operates an e-commerce platform for buying and selling used cars. Complainant also offers automobile financing services and extended warranty and gap insurance for the automobiles it sells. In addition, Complainant operates through automobile vending machines located in certain major cities in the United States. Complainant operates in more than 260 markets covering 73% of the United States population, and in 2019 sold more than 175,000 vehicles to retail customers with revenues exceeding USD 3 billion. Complainant’s commercial website at “www.carvana.com” averages more than 5 million unique visitors each month. While Complainant was launched as recently as 2013, the Panel takes administrative notice that the CARVANA trademark has become well known in the United States. According to the Registrar’s verification, Respondent is the registrant of the disputed domain names. According to that verification, the record of registration of each disputed domain name was created on July 27, 2020. There is no indication on the record of this proceeding that registration of the disputed domain names has been held by any party other than Respondent. Respondent appears to be the owner of an automobile dealership located in the State of Michigan in the United States. According to Complainant, Respondent used the disputed domain names to redirect Internet users to a website Respondent operates in connection with that dealership.1 As of the filing of the Complaint in this matter the disputed domain names are directed to parking pages provided by the Registrar with The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it has rights in the trademark CARVANA and that the disputed domain names are confusingly similar to that trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent is not in any way associated with Complainant and has never received authorization or a license to use Complainant’s trademark; (2) Complainant’s trademark is well known in the United States; (3) Respondent has not been commonly known by CARVANA and has not secured trademark rights in that term, and; (4) Complainant’s trademark is a coined term which a third-party such as Respondent would not use without intending to refer to Complainant. Complainant argues that Respondent registered and used the disputed domain names in bad faith because: (1) the disputed domain names are designed to trade on the reputation and goodwill of Complainant in its trademark for financial gain by diverting Internet users to Respondent’s website; (2) Respondent continues to passively hold the disputed domain names that are associated with parking pages with PPC links, which evidences bad faith, and; (3) Respondent has no legitimate rights in the disputed domain names. Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier delivery to Respondent was successful, and there is no evidence on the record of the proceeding to suggest that email transmission to Respondent encountered difficulty. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) 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 Complainant has provided substantial evidence of rights in the trademark CARVANA, including by registration at the USPTO, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the CARVANA trademark. The disputed domain names each directly incorporate Complainant’s distinctive coined trademark. One adds the term “protectionplan”, and the other “warranty”. Complainant’s trademark is readily identifiable within the disputed domain names and this supports a finding of confusing similarity as to each. Addition of the terms “protectionplan” and “warranty”, respectively, to Complainant’s trademark in the disputed domain names does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain names, taking note that each of those added terms refers to a service that would routinely be offered in connection with retail automobile sales. The Panel determines that the disputed domain names are each confusingly similar to Complainant’s trademark within the meaning of the Policy. The Panel determines that Complainant has established rights in the trademark CARVANA and that the disputed domain names are each confusingly similar to that trademark. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Complainant has alleged that Respondent used the confusingly similar disputed domain names to redirect Internet users to Respondent’s commercial website that promoted an automobile dealership which is in the same line of business as Complainant. Respondent did not attempt to rebut that allegation, and in the circumstances of this case the Panel accepts that allegation as true, particularly given that Respondent is named on the website of Respondent’s automobile dealership. Such use of the disputed domain names by Respondent does not constitute legitimate noncommercial or fair use of the confusingly similar disputed domain names, nor does subsequent redirection of the disputed domain names by Respondent to registrar-supplied parking pages with PPC links establish rights or legitimate interests. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that a disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location”. Respondent has used the disputed domain names that are confusingly similar to Complainant’s distinctive trademark intentionally for purposes of commercial gain to redirect Internet users to Respondent’s website and competing brick and mortar business. Given the well-known character of Complainant’s trademark in the field of retail automobile transactions, Respondent must have been aware of Complainant’s rights in its trademark when it registered and used the dispute domain names, and Respondent sought to take unfair advantage of Complainant’s rights. The Panel determines that Respondent registered and is using each of the disputed domain names in bad faith within the meaning of paragraph 4(b) 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, Frederick M. Abbott 1 The automobile dealership website pages annexed to the Complaint do not show the disputed domain names. This, however, is not dispositive of redirection as website addresses (URL’s) can be set up to mask the source of redirection.
pay-per-click (PPC) links.
Sole Panelist
Date: November 11, 2020
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