Complainant is Carvana, LLC, United States of America (the “United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Francisco Maia, United States. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 1, 2021, 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 March 1, 2021 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 March 3, 2021. 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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. Respondent submitted several communications to the Center, on March 8, 18, 24, and 25, 2021. These communications discussed the facts and issues in this proceeding. Although one of the communications was dated after the due date for Response, and although Respondent did not designate any of the communications as an official or formal Response, the Panel has exercised its discretion under Paragraph 10(d) of the Rules to consider the filings. The Panel notes, nevertheless that, as discussed herein, this does not change the outcome of the dispute. Respondent also sent communications to the Center on April 15 and 29, 2021. These late responses were received after appointment of the Panel, and have not been considered. The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 14, 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 an e-commerce platform based in the United States. Complainant uses its website, located at “www.carvana.com”, to buy and sell used cars, as well as offering related services. Complainant has used the mark CARVANA in connection with its services since 2013. Complainant owns several trademark registrations, including United States Registration No. 4328785 (registered April 30, 2013). The Disputed Domain Names were registered on November 12, 2020. The Disputed Domain Names resolve to parked webpages that include links to competing services for vehicle sales. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant Complainant contends that the (i) Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondent registered and is using the Disputed Domain Names in bad faith. In particular, Complainant contends that it owns the “highly recognized and famous” CARVANA mark, and that it enjoys a strong reputation in the field of e-commerce, with over USD 3 billion in revenue in 2019. Complainant contends that Respondent has incorporated Complainant’s CARVANA mark into the Disputed Domain Names, and merely added the generic or descriptive numbers “400,” “500,” “600,” or “700.” Complainant contends that this is likely to confuse prospective online consumers into thinking that the Disputed Domain Names are affiliated or endorsed by Complainant, and Complainant’s e-commerce services. Complainant contends that Respondent has no rights or legitimate interests in the registration or use of the Disputed Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in using the Disputed Domain Names, including links to competing e-commerce services, presumably for Respondent’s own commercial gain. B. Respondent Respondent sent several communications to the Center regarding this proceeding as well as another proceeding filed by Complainant against Respondent. Respondent did not designate any of its messages as a formal response to Complainant’s contentions, and two of the messages were sent after the due date for response by Respondent. As noted above, the Panel nevertheless exercises its discretion to consider all Respondent’s contentions, but two. In particular, Respondent denies any wrongdoing in connection with the Disputed Domain Names. Rather, Respondent asserts that he has “no intention to use these domains” on his website, which has “never been online.” Respondent further contends that he “bought these domains to keep them parked.” 6. Discussion and Findings A. Identical or Confusingly Similar This Panel must first determine whether the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The Disputed Domain Names directly incorporate Complainant’s registered trademark CARVANA, and merely add the numbers “400,” “500,” “600,” or “700.” Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter-IKEA v Polanski,WIPO Case No. D2000-1614 (transferring The Panel therefore finds that the Disputed Domain Names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in a disputed domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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 communications sent by Respondent do not discuss or refer to any legitimate interest in the Disputed Domain Names. As noted, Respondent states that the Disputed Domain Names have “never been online,” and that Respondent “bought these domains to keep them parked.” The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the Disputed Domain Names, which Respondent has not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, the Disputed Domain Names resolve to parked webpages, that include links to competing services for vehicle sales. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The Panel finds sufficient evidence that Respondent registered and used the Disputed Domain Name with knowledge of Complainant’s prior rights, and in particular with regard to Complainant’s e-commerce services offered under the CARVANA mark, which have been found by prior UDRP panels to be well-known. See, for example,Carvana, LLC v. Registration Private of Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2256; Carvana, LLC v. Registration Private, Domains By Proxy, LLC / Cline Davis, WIPO Case No.D2020-0859; and Carvana, LLC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-1533. Therefore, the Panel finds that Respondent registered and is using the Disputed Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy. 7. Decision For all 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, Lorelei Ritchie
Sole Panelist
Dated: April 30, 2021
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