Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Lenny Mathewson, 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 December 15, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 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 Complainant on December 22, 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 December 22, 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 December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on January 26, 2021. 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 ane-commerce platform for buying and selling used cars. Complainant is a company that promotes and renders its online vehicle dealership services and online vehicle financing services throughout the United States under its CARVANA Mark and through its primary website “www.carvana.com”, which hosts its e-commerce platform. Complainant also offers extended warranty and gap insurance services for the vehicles it sells. Complainant delivers vehicle throughout the United States and also operates 26 Carvana Vending Machines located in major cities in the United States. Complainant has grown rapidly since launching in January 2013 and currently operates in more than 261 markets, covering more than 73.2% of the United States population. In 2019 alone, Complainant sold more than 175,000 vehicles to retail customers with used vehicle sales revenue exceeding USD 3 billion. Complainant’s website averages more the 5 million unique visitors each month. Complainant holds several registrations of the CARVANA Mark in the United States. These registrations include, without limitation, Registration No. 4328785 for CARVANA, registered on April 30 2013 in International classes 35, 36 and United States Registration No. 4971997 CARVANACARE, registered on June 7, 2016 in International class 36. Complainant has expended, and continues to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in its extremely valuable and famous CARVANA brand goods and services under and in connection with its highly recognized and famous CARVANA Mark. The Disputed Domain Name was registered on October 11, 2020. The Disputed Domain Name redirects Internet users to parked pages with links to third-party websites. 5. Parties’ Contentions A. Complainant Complainant contends that this situation is a textbook case of cybersquatting and typo-squatting. Complainant further contends that Respondent is engaged in the unauthorized use of Complainant’s registered CARVANA Mark, and that the Disputed Domain Name wholly incorporates Complainant’s CARVANA Mark and merely adds the term “okta” to the end. Complainant further contends that the term “okta” relates to an employee identity management and user authentication portal that is provided to Complainant by Okta and that is accessed by Complainant’s employees at the very similar address Complainant asserts that, by design, Respondent registered the Disputed Domain Name which wholly incorporates the CARVANA Mark with the intention to misdirect Internet users and to exploit likely typing mistakes on the part of Internet users. Complainant further alleges that the mere addition of random letters to a trademark is not sufficient to eliminate the confusing similarity, just an additional term or addition letters is not sufficient. First, Complainant alleges that Respondent is not in any way associated with Complainant and has never sought nor received authorization or a license to use the CARVANA Mark in any way or manner. Second, Complainant alleges that the CARVANA Mark is well-known and Complainant alleges that its existence was known to Respondent when the Disputed Domain Name was registered. Third, Complainant alleges that Respondent has no means to establish that it is or ever has been commonly known as “Carvana” or any variation thereof. Upon information and belief, Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “Carvana” or any variation thereof. Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in or to the CARVANA Mark or any similar marks. Fourth, the Disputed Domain Name wholly incorporates the CARVANA Mark and resolves to parked pages with link to employee management websites and competing automobile dealership, insurance and financing services. Respondent is not making any legitimate noncommercial use of the Disputed Domain Name. To the contrary, Respondent’s use of the Disputed Domain Name is purely commercial and is not legitimate. Complainant has not licensed or otherwise permitted Respondent use any of Complainant’s trademarks or to apply for or use any domain name incorporating any of those marks, Respondent adopted and continues to use the Disputed Domain Name that wholly incorporates the CARVANA Mark for the illegal and improper purpose of: (i) illegally trading upon Complainant’s goodwill to confuse, mislead, deceive and divert customers and (ii) intentionally tarnishing and diluting Complainant’s valuable and well-known trademark. “Carvana” is an invented English word, and as such, third parties would not legitimately choose this name unless seeking to create an impression of an association with Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) the Disputed Domain Name registered by Respondent is identical or confusingly similar to the CARVANA Mark or service mark in which 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 contends that it has numerous registrations of the CARVANA Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the CARVANA Mark. Complainant holds several registrations of the CARVANA Mark in the United States. These registrations include, without limitation, Registration No. 4328785 for CARVANA on April 30 2013 in International classes 35, 36 and United States Registration No. 4971997 for CARVANACARE on June 7, 2016 in International class 36. Respondent has failed to contest the registrations of Complainant. Therefore, the Panel finds that Complainant has enforceable trademark rights in the CARVANA Mark for purposes of this proceeding. Complainant contends that the Disputed Domain Name wholly incorporates Complainant’s CARVANA Mark and merely adds the term “okta” to the end. Complainant further contends that the term “okta” relates to an employee identity management and user authentication portal that is provided to Complainant by Okta and that is accessed by Complainant’s employees at the very similar address Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in the Disputed Domain Name will be considered confusingly similar. Also, section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms like “okta” (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also, section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top-Level Domains (“gTLD”) such as “.com” may be disregarded for purposes of assessing confusing similarity. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the CARVANA Mark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the CARVANA Mark. Complainant alleges that Respondent has no means to establish that it is or ever has been commonly known as “carvana” or any variation thereof. Upon information and belief, Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “carvana” or any variation thereof. Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in or to the CARVANA Mark or any similar marks. The Disputed Domain Name wholly incorporates the CARVANA Mark and resolves to parked pages with link to employee management websites and competing automobile dealership, insurance and financing services. Respondent is not making any legitimate noncommercial use of the Disputed Domain Name. To the contrary, Respondent’s use of the Disputed Domain Name is purely commercial and is not legitimate. Complainant has not licensed or otherwise permitted Respondent use any of Complainant’s trademarks or to apply for or use any domain name incorporating any of those marks, Respondent adopted and continues to use the Disputed Domain Name that wholly incorporates the CARVANA Mark for the illegal an improper purpose of: (i) illegally trading upon Complainant’s goodwill to confuse, mislead, deceive and divert customers and (ii) intentionally tarnishing and diluting Complainant’s valuable and well-known trademark. The Panel finds that Respondent has never been commonly known by the Disputed Domain Name, nor has Respondent engaged in any bona fide sales of good or services, nor has Respondent made any legitimate noncommercial activity. Therefore, Complainant has demonstrated the necessary elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the CARVANA Mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the CARVANA Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Carvana Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product. Complainant asserts that Respondent registered and is using the Disputed Domain Name in bad faith. First, the Disputed Domain Name is plainly designed to trade off the reputation and goodwill of the CARVANA Mark for financial gain. Respondent utilized the Disputed Domain Name to deliver potential users (a) away from Complainant’s primary website at “www.carvana.com”, (b) away from Complainant’s authentic CARVANA brand services and (c) toward Respondent’s website. Complainant further asserts that Respondent is diverting Internet users to its website to generate traffic and sales commissions for its own commercial benefit. Complainant contends that the Disputed Domain Name is used to divert Internet traffic from Complainant’s official website located at “www.carvana.com”. Complainant further contends that Respondent currently uses the Disputed Domain Name for a parked page with click-through advertising links to third-party websites, including human resources and employee services, and vehicle sales websites that directly compete with Complainant Respondent has failed to contest these assertions. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the CARVANA Mark and Complainant has established the other fundamental elements of paragraph 4(b)(iv) of the Policy and 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 Richard W. Page
Sole Panelist
Date: February 8, 2021
Full & Egal Universal Law Academy