The Complainant is Carvana, LLC, United States of America (“United States” or “U.S.”), 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 December 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 25, 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 January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on February 16, 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 The Complainant is an e-commerce platform for buying and selling used cars. It promotes and renders its online vehicle dealership services and online vehicle financing services throughout the United States under its CARVANA trademarks and through its primary website, “www.carvana.com”, which hosts its e-commerce platform. The Complainant holds several trademark registrations for the CARVANA mark and variations thereof in the United States, such as the following registrations: - U.S. CARVANA trademark, registration No. 4,328,785, registered on April 30, 2013; The Respondent registered the Domain Name on November 11, 2020. The Respondent currently uses the Domain Name for a parked page with click-through advertising links to third party websites, including auto dealership, financing, and insurance websites that directly compete with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical to the Complainant’s CARVANA trademark, except that it adds a single letter “w” to the end of the mark. The Complainant argues that the addition of a single letter to the Complainant’s mark does not obviate confusion. The Complainant alleges that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s CARVANA marks in any way or manner. The Complainant claims that its CARVANA marks are well-known. The Complainant asserts that the Respondent is not or has never been commonly known as “Carvana” or any variation thereof. The Complainant contends that the Domain Name, which wholly incorporates the Complainant’s CARVANA marks, resolves to a parked page with links for competing websites offering auto dealership, financing, and insurance services, so the Domain Name is registered for and is used to lure consumers to a website for commercial gain. The Complainant argues that the Respondent is not making any legitimate noncommercial use of the Domain Name. The Complainant alleges that the CARVANA mark 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 the Complainant. The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith. The Complainant contends that the Domain Name is designed to trade on the reputation and goodwill of the Complainant and its CARVANA marks for financial gain because the Respondent utilizes the Domain Name to divert potential users away from the Complainant’s primary website, its services, and toward the Respondent’s website, which offers competing automobile services. The Complainant alleges that the Respondent registered the Domain Name, which wholly incorporates the Complainant’s marks, and is using it to redirect Internet users to parked pages with links to third-party websites, some of which offer vehicle sales, insurance, and dealership services that directly compete with the Complainant. The Complainant argues that the Respondent’s complete lack of intellectual property rights in the Domain Name further demonstrates bad faith in adopting and using it because the Domain Name is so obviously connected the Complainant’s services. Finally, the Complainant contends that the Respondent registered the Domain Name years after the Complainant began using its CARVANA marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name 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 Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns several trademark registrations for the CARVANA trademark. Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Domain Name consists of the Complainant’s CARVANA trademark except that it adds a single letter “w” to the end of the mark, and the generic Top-Level Domain (“gTLD”) “.com”. Previous UDRP panels found that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered… to be confusingly similar to the relevant mark for purposes of the first element”1 . It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement2 . Thus, the Domain Name is confusingly similar to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To satisfy the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent3 . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel accepts that the Complainant has not licensed or permitted the Respondent to use the Complainant’s CARVANA trademark in domain names, or for any other purpose. There is no evidence that the Respondent has been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. Nor has the Respondent used the Domain Name in connection with a bona fide offering of goods or services. It is well-established among UDRP panels that “the use of a domain name to host a parked page comprising [pay-per-click (“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”4 . Here, the Respondent is using the Domain Name comprised of the misspelling of the Complainant’s trademark to direct to a parked page comprising of PPC links that offer auto dealership, financing, and insurance websites like those of the Complainant and is deriving commercial gain from the PPC links. For the reasons stated, the Panel finds that the Complainant has made out the prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. The Complainant contends that the Respondent designed the Domain Name to trade on the reputation and goodwill of the Complainant and its CARVANA marks for financial gain. The Complainant contends that the Respondent utilizes the Domain Name to divert potential users away from the Complainant’s website and its brand services, and toward the Respondent’s website, which offers competing services. The Panel accepts this unchallenged contention. It is well-established that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name.5 Therefore, the Respondent is responsible for diverting Internet users to its website and websites associated with websites of the Complainant’s competitors to generate traffic and sales commissions for its own commercial benefit. Under the circumstances, it is reasonable for the Panel to conclude that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source of the website. The Panel finds it more likely than not that the Respondent registered and is using the Domain Name in bad faith. Therefore, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the UDRP. 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 Domain Name Olga Zalomiy 1 Section 1.9, WIPO Overview 3.0 2 Section 1.11.1, WIPO Overview 3.0 3 Section 2.1, WIPO Overview 3.0 4 Section 2.9, WIPO Overview 3.0 5 Section 3.5, WIPO Overview 3.0
- U.S. CARVANA trademark, registration No. 5,022,315, registered on August 16, 2016.
Sole Panelist
Date: March 2, 2021
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