The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2020. The Center appointed König Horowicz, Theda as the sole panelist in this matter on October 12, 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 leading e-commerce platform which was launched in 2013 and which is active in the buying and selling of used cars. It promotes and renders its online automobile dealership services and automobile online automobile financing services throughout the United States under its CARVANA trademarks and its official website “www.carvana.com”. The Complainant holds several trademark registrations for CARVANA, in particular United States trademark registration CARVANA No 4,328,785 filed on April 11, 2011, and registered on April 30, 2013 for “online dealership featuring automobiles” in international class 35 and “online financing services in the field of automobile loans” in international class 36. The disputed domain name was registered on August 11, 2020. It redirects to a parked page with click-through advertising links to third party websites. 5. Parties’ Contentions A. Complainant The Complainant alleges that the present proceedings relate to a textbook case of typo-squatting. According to the Complainant, the Respondent is engaged in the unauthorized use of the Complainant’s registered trademark as the disputed domain name completely incorporates Complainant’s CARVANA trademarks and simply adds a letter “p” to the said CARVANA trademarks. This addition of a single letter does not obviate confusion. Actually, the Respondent registered an insignificant version of the Complainant’s CARVANA trademarks to misdirect internet users who make a typographical error. The Complainant also estimates that the Respondent lacks of any legitimate rights in the CARVANA trademarks. First, the Respondent is in no way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous and distinctive CARVANA trademarks in any way or manner, these marks being well-known in the United States. Second, the Respondent is not known as CARVANA or any variation thereof and has not registered CARVANA as a tradename, corporate name or trademark. Third, the disputed domain name uses the Complainant’s CARVANA trademarks for parked pages with click-through advertising links to third-party websites and does hence lure consumers to an imposter’s site for commercial gain. The Complainant finds that the Respondent registered and continues to use the disputed domain name in bad faith. First the disputed domain name is designed to trade on the reputation and goodwill of the Complainant and its CARVANA trademarks for financial gain. The Respondent utilizes the disputed domain name to divert potential users away from the Complainant’s primary website and authentic CARVANA brand services. The third-party website include websites that offer services directly competing with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant showed it has trademark rights in CARVANA through several trademark registrations in the United States. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing 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 domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The disputed domain name only differs from the Complainant’s trademark CARVANA through the addition of a letter “p” after “carvana”. The Complainant’s mark is nevertheless clearly recognizable and entirely contained in the disputed domain name, and consequently the disputed domain name is confusingly similar to the trademark. In this frame, the Panel notes that in a very similar case relating to the domain name Considering the above, the Panel concludes that the first element required by paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (i) the use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; or (iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0 , section 2.1 . The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name, notably stating that: - The Complainant has never licensed or otherwise authorized in any way the Respondent to use the CARVANA trademark. - The Complainant’s CARVANA trademark is well-known in the United States. - CARVANA is an invented English word which third parties would not legitimately choose unless seeking to create an impression of an association with the Complainant. - The Respondent is not known as CARVANA. - The disputed domain name uses the Complainant’s CARVANA trademarks for parked pages with click-through advertising links to third-party websites and does hence lure consumers to an imposter’s site for commercial gain. Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent. The Respondent has chosen not to reply. No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name. Furthermore, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (See WIPO Overview 3.0, section 2.9) which is obviously the fact in the present proceedings since the Complainant established the well-known character of its CARVANA trademarks in the United States. In view of the above and in the lack of any response from the Respondent, the Panel is satisfied that the Complainant’s prima facie case is unrebutted, and that it is more than likely that the Respondent does not use the disputed domain name for a bona fide offering of goods or services. Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As it was recognized by other panels, the Complainant is a well-established company in the United States which operates since January 2013 under the tradename and trademark CARVANA. The disputed domain name was registered on May 15, 2020, that is many years after the Complainant commenced business. In addition, previous UDRP panels have recognized the CARVANA trademark as being well-known in the United States (see Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ferel Demis,WIPO Case No. D2020-2032). Consequently, the Panel arrives to the conclusion that the Respondent knew of the Complainant’s trademarks and deliberately registered the almost identical disputed domain name (see WIPO Overview 3.0, section 3.2.2). Furthermore, the case file shows that the disputed domain name redirected to a parking page containing links to third party websites offering services competing with the Complainant. This obviously falls in the scope of bad faith use as defined by the Policy. The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith in the circumstances of this proceeding. In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service in the context of this case, is an indication that the Respondent intentionally hides its identity and uses the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6). In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under 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, König Horowicz, Theda
Sole Panelist
Date: October 29, 2020
Full & Egal Universal Law Academy