The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Demis Teril, 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 September 22, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 23, 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 September 25, 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 September 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2020. The Center appointed Anne-Virginie, La Spada as the sole panelist in this matter on October 23, 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 company founded in January 2013 and based in the United States. It operates an e-commerce platform for buying and selling cars throughout the United States. These services of online dealership and financing services are rendered under the name “Carvana”. The Complainant promotes and renders its services through its primary website at “www.carvana.com”, which hosts its e-commerce platform. The Complainant is the owner of several trademark registrations for CARVANA in the United States and in particular the following: - United States trademark registration number 4328785 registered on April 30, 2013, in classes 35 and 36. The disputed domain name The disputed domain name resolves to a webpage stating “This site can’t be reached” and “carvana-group.com’s server IP address could not be found”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its CARVANA trademark. Indeed, the disputed domain name incorporates the trademark CARVANA in its entirety, and the addition of the hyphen and word “group” does not obviate confusion, as the mark CARVANA remains clearly recognizable. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not authorized by the Complainant to use the disputed domain name, and there is no indication that the Respondent is known under the disputed domain name. The Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent making any legitimate non-commercial use of the disputed domain name. According to the Complainant, the disputed domain name is registered to lure consumers to an inaccessible site do disrupt the Complainant’s business. The Complainant contends finally that the disputed domain name is plainly designed to trade on the reputation and goodwill of the Complainant and its CARVANA mark for financial gain. The Respondent uses the disputed domain name to divert potential users away from the Complainant’s primary website and away from the Complainant’s services, and toward the Respondent’s website. The Complainant also contends that the Respondent is passively holding the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent 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 in respect of the domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns trademark registrations for the trademark CARVANA. The disputed domain name As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Deutsche Lufthansa AG v. Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2012-1742). In the present case, the trademark CARVANA is clearly recognizable in the disputed domain name. The mere addition of the descriptive term “group” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (See for example DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark,WIPO Case No. D2019-3141). UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a non-commercial or fair use of the disputed domain name. Instead, the disputed domain name resolves to a webpage stating that “This site can’t be reached”. Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well‑known trademark with an additional term, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant (see section 2.5.1 of the WIPO Overview 3.0.). Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent to avoid such a finding. Therefore, the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Given the distinctive nature of the trademark CARVANA, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its CARVANA trademark at the time of the registration of the disputed domain name. As a consequence, the Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademark. The Respondent does not appear to have used the disputed domain name in connection with an active web site. The Panel is unable to ascertain on the basis of the available evidence whether, as the Complainant contends, the Respondent attempted to divert potential users away to the Complainant’s website and services in order to disturb the Complainant’s business or for financial gain. This being said, in certain circumstances, UDRP panels have held that passive holding of a domain name could amount to use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (section 3.3 of the WIPO Overview 3.0). In the case at hand, the trademark CARVANA is distinctive. The Respondent failed to submit a Response or to allege any actual or contemplated use of the disputed domain name. Also, the Respondent did not provide accurate contact details. Indeed, the DHL shipment of the Complaint could not be delivered. Finally, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain name, given the fact there is no relationship between the Respondent and the Complainant. If the disputed domain name was connected to an active website in the future, consumers would be likely to mistakenly assume that such website is operated or endorsed by the Complainant, when such is not the case. For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 Anne-Virginie, La Spada
- United States trademark registration number 5022315 registered on August 16, 2016, in class 39
- United States trademark registration number 6037292 registered on April 21, 2020, in classes 35, 36 and 39.
Sole Panelist
Date: November 6, 2020
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