The Complainant is Carvana, LLC, United States of America (the “United States” or “U.S.”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Paul Warnert, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The 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. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2021. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 6, 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 a company that offers online vehicle dealership services and online vehicle financing services throughout the United States under its CARVANA marks and through its primary domain name, Complainant holds several trademark registrations for the CARVANA mark and variations in the United States of America, for example: - U.S. Registration No. 4,328,785 for CARVANA registered on April 30, 2013; - U.S. Registration No. 4,971,997 for CARVANACARE registered on June 7, 2016; - U.S. Registration No. 5,022,315 for CARVANA registered on August 16, 2016; and - U.S. Registration No. 6,037,292 for CARVANA registered on April 21, 2020. The Domain Names were registered on January 12, 2021. The Domain Names each resolve to webpages with links to third-party websites. In particular, the Complainant contends that (i) the Domain Names are identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith. In particular, Complainant contends that it has trademark registrations for the CARVANA marks and owns domain names incorporating the CARVANA marks. Complainant contends that Respondent registered and is using the Domain Names, to confuse Internet users looking for bona fide and well-known CARVANA products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names were registered and are being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the CARVANA marks, which have been registered since at least as early as 2013, well before Respondent registered the Domain Names on January 12, 2021 as noted above. Complainant has also submitted evidence, which supports that CARVANA are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the CARVANA marks. With Complainant’s rights in the CARVANA marks established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the Top-Level Domain (“TLD”) in which they are registered (in this case, “.com”), are identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Names are confusingly similar to Complainant’s CARVANA marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Names. The complete incorporation of the CARVANA mark and the respective addition of the terms “service” and “services” in the Domain Names, Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the CARVANA marks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the CARVANA trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the Domain Names or CARVANA marks. In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that each of the Domain Names resolves to a website that features third party sponsored links to a wide range of products and services, including: - “Campervan Rental”, “Sleeper Van Rental”, “Shuttle Services”, “Taxi to Airport”, “Taxi Service Nearby” and “Airport Shuttle Service” in the case of - “Technology Consulting”, “Business Consulting Services”, “Consulting Services”, “Treatment Centers Nearby”, “Shipping Services” and “Logistics” in the case of In each case, the redirected webpage also features a link titled “Get This Domain” which directs users to a page that offers the possibility of sale and purchase of the respective Domain Name. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under these circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Names. Further, the nature of the Domain Names carry a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out of pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the CARVANA marks long predate the registration of the Domain Names by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s CARVANA marks and related services are widely known and recognized. Therefore, Respondent was likely aware of the CARVANA marks when he registered the Domain Names, or knew or should have known that the Domain Names were confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Names incorporating Complainant’s widely-known CARVANA trademark in its entirety, suggests that Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the CARVANA marks, in an effort to opportunistically capitalize on the registration and use of the Domain Names. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007. Further, the Domain Names not only incorporates Complainant’s CARVANA mark in its entirety, it also incorporates an intentional addition of the terms “service” and “services” in the Domain Names, which suggests Respondent’s actual knowledge of Complainant’s rights in the CARVANA mark at the time of registration of the Domain Names and its effort to opportunistically capitalize on the registration and use of the Domain Names. As discussed above, the Domain Names each resolves to a webpage that diverts users to third party websites featuring various products and services, including: - “Campervan Rental”, “Sleeper Van Rental”, “Shuttle Services”, “Taxi to Airport”, “Taxi Service Nearby” and “Airport Shuttle Service” in the case of - “Technology Consulting”, “Business Consulting Services”, “Consulting Services”, “Treatment Centers Nearby”, “Shipping Services” and “Logistics” in the case of In each case, the redirected webpage also features a link titled “Get This Domain” which directs users to a page that offers the possibility of sale and purchase of the respective Domain Name. Therefore, the Panel finds that by thus using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Names, Kimberley Chen Nobles
Sole Panelist
Date: April 14, 2021
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