The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Rbiniedk Demer, Sweden. 2. The Domain Name and Registrar
The disputed domain name 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 disputed domain name. On March 2, 2021, 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 March 3, 2021 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 March 4, 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 the Respondent of the Complaint, and the proceedings commenced on March 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2021. The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 13, 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 runs an e-commerce platform for buying and selling used vehicles in the United States. It promotes and renders its online vehicle dealership services and online vehicle financing services throughout the United States under its trademarks CARVANA and through its primary website at the domain name According to the Registrar’s verification response, the Respondent registered the disputed domain name on November 24, 2020. The language of the registration agreement at the time of registration was English. The Complaint is based amongst others on the following word trademarks CARVANA, applied for before the date of registration of the disputed domain name, i.e. United States trademark registration No. 4,328,785, registered on April 30, 2013, for services in classes 35 and 36 and United States trademark registration No. 5,022,315, registered on August 16, 2016, for services in class 39. It results from the undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a website in German language which features the CARVANA trademark and contains an online marketplace for vehicles. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the Complainant’s registered trademarks since it incorporates the Complainant’s CARVANA. The mere addition of the hyphen and the generic word “markt” (which means “market” in German language) does not obviate confusion because the Complainant’s marks remain clearly recognizable within the disputed domain name. In fact, the addition of the German language term “markt” exacerbates confusion because the disputed domain name is used to display a website in German language, and also because the Complainant is an online marketplace for sales of vehicles. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent contents that (1) the Respondent is not authorized by the Complainant to use the disputed domain name; (2) the Complainant’s trade and service marks are known; (3) there is no indication that the Respondent is known under the disputed domain name; (4) the disputed domain name is identical or confusingly similar to Complainant’s trademarks and serves as “bait” to attract customers to Respondent’s sites and (5) the disputed domain name is primarily descriptive of Complainant’s services as it incorporates Complainant’s trade and service marks. Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith in particular, because by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, internet users to the Respondent’s website, 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. Since the disputed domain name is used for a counterfeit website seeking to pass itself off as the Complainant, the Respondent was well aware of the Complainant and its established and continuous use of the CARVANA-trademarks. In addition, the Respondent’s complete lack of intellectual property rights in the disputed domain name further demonstrates bad faith in adopting and using it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of several trademark registrations consisting of the verbal element CARVANA, i.e. United States trademark registration No. 4,328,785, registered on April 30, 2013, for services in classes 35 and 36 and United States trademark registration No. 5,022,315, registered on August 16, 2016, for services in class 39. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademarks CARVANA are fully included in the disputed domain name. Furthermore, it is the view of this Panel that the combination of the trademark CARVANA with the German language term “markt” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademarks. In fact, in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. In the case at hand, the addition of the (German language) dictionary term “markt” to the trademark does not prevent a finding of confusing similarity (see L’Oréal v. Darya Goshovskaya,WIPO Case No. D2020-0486 for the term “market”). In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. First, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a website which features an online marketplace for vehicles claiming to be the CARVANA website, while the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. In this Panel’s view, such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use rather capitalizes on the reputation and goodwill of the Complainant’s trademarks and is therefore likely to mislead Internet users. In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized or licensed the Respondent’s use of the CARVANA trademarks for registering the disputed domain name, which are confusingly similar. Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademarks CARVANA consist of a neologism and are distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this trademarked term. In particular, the Panel notes that the CARVANA trademark is reproduced in its entirety with the added term “markt”, being this term applicable to the business field in which the Complainant plays a prominent role, i.e. an online market place for vehicles. In addition, the disputed domain name is used for a purely commercial website, so that a “noncommercial” use is excluded from the outset. It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant and concrete evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances that the Panel finds applicable to the present dispute is that the Respondent by using the disputed domain name, 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand: It results from the documented and undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a website in German language which features the CARVANA trademark (and the Complainant’s original logo) and contains an online marketplace for vehicles. However, the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s trademarks and products. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks CARVANA entirely when it registered the disputed domain name. Registration of a domain name which contains a third party’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see e.g., Charlotte Tilbury TM Limited v. Domains By Proxy, LLC / Qiangdong Liu, 365rw.com.ltd,WIPO Case No. D2020-0408; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). The finding of bad faith registration and use is supported by the following further circumstances resulting from the case at hand: (i) the Respondent’s failure to submit a response, In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 Tobias Malte Müller
(ii) the Respondent’s failure to provide any evidence of actual or contemplated good-faith use,
(iii) the implausibility of any good faith use to which the disputed domain name may be put, and
(iv) the Respondent concealing its identity behind a privacy shield.
Sole Panelist
Date: April 27, 2021
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