The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Flaunt7, Vikhyat Singh, India, and Demis Terel, Germany.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 4, 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 the Complainant on August 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to submit a separate complaint for each of the disputed domain names. The Complainant filed an amended Complaint on August 11, 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 August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Respondent Flaunt7, Vikyat Singh transmitted a communication to the Center by email on August 19, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 7, 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 BackgroundThe Complainant is an e-commerce platform for buying and selling used cars. It promotes and renders its online vehicle dealership and vehicle financing services throughout the United States under its CARVANA trademarks and through its primary website at “www.carvana.com”. The Complainant has grown rapidly since launching in January 2013, and currently operates in more than 265 markets, covering more than 73.7% of the United States population. In 2020, the Complainant sold more than 240,000 vehicles to retail customers, with used vehicle sales revenue exceeding USD 5.5 billion. The Complainant’s website averages more than 8.5 million unique visitors each month.
The Complainant is the owner of several trademark registrations, including United States Trademark Registration No. 4328785 (filed on April 11, 2011, and registered on April 30, 2013) for the word trademark CARVANA, and United States Trademark Registration No. 4339264 (filed on May 20, 2011, and registered on May 21, 2013) for a design trademark consisting of a stylized image of the front profile of a motorcar topped by a halo.
The disputed domain name
The Complainant contends that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights because: (i) each disputed domain name incorporates the Complainant’s CARVANA word trademark in its entirety, and adds either “markt” or “markts”, the German words for “market” and “markets”, respectively; (ii) for each disputed domain name, the addition of the German word exacerbates confusion because the disputed domain name is used to display a website in the German language, and because the Complainant is an online marketplace for sales of vehicles; and (iii) each disputed domain name seeks to exploit likely typing or spelling mistakes on the part of Internet users, where “markt” is a misspelling of the English word “market”.
The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names because: (i) the Respondents are not in any way associated with the Complainant, and have never sought or received authorization or a license to use the Complainant’s valuable, famous and distinctive CARVANA trademark in any way or manner; (ii) the Complainant’s CARVANA trademark is well-known; (iii) the Respondents have no means to establish that they are or have been commonly known as “Carvana” or any variation thereof; (iv) upon information and belief, the Respondents have not sought or procured any registration for any tradenames, corporations, or trademarks with any governmental or business authority for “Carvana” or any variation thereof, and do not appear to have any legitimate trademark, service mark, or other intellectual property rights in or to the CARVANA trademark; (iv) each of the disputed domain names wholly incorporates the Complainant’s CARVANA trademark and merely adds the German word for “market” or “markets”; (v) the disputed domain names are being used to lure consumers to an imposter’s site for commercial gain by resolving to a counterfeit website that contains the Complainant’s design trademark and which seeks to impersonate the Complainant; (vi) the Respondents are not making any legitimate noncommercial use of the disputed domain names, as they are actively seeking to pass themselves off as the Complainant; (vii) the Respondents are intentionally tarnishing and diluting the Complainant’s valuable and well-known trademarks; and (viii) the CARVANA trademark is an invented English word and, as such, is not one that third parties would choose unless seeking to create an impression of an association with the Complainant.
The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Respondents are utilizing the disputed domain names to divert potential users away from the Complainant’s primary website at “www.carvana.com” and toward the Respondents’ counterfeit, impersonating website; (ii) the website resolving from the disputed domain names claims to sell vehicles and features prominent use of the Complainant’s CARVANA word trademark and design trademark; (iii) the Respondents’ complete lack of intellectual property rights in the disputed domain names further demonstrates bad faith in adopting and using them; (iv) the Respondents registered the disputed domain names years after the Complainant began using its CARVANA trademark; (v) the Respondents use of the Complainant’s design trademark purportedly to sell cars shows clear knowledge of the Complainant; and (vi) the Respondents wrongfully use a counterfeit site to attempt to pass themselves off as the Complainant, in order to draw users to the Respondents’ website, create confusion, and improperly reap commercial profit through diverted sales.
B. RespondentOn August 19, 2021, the Respondent Flaunt7, Vikyat Singh, the named registrant of the disputed domain name
None of the other named Respondents replied to the Complainant’s contentions.
6. Discussion and Findings A. Consolidation of Complaints against Multiple RespondentsAs explained in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in determining whether to permit a complaint that has been filed in respect of multiple domain names registered by different respondents, panels look at whether the domain names or corresponding websites are subject to common control and whether the consolidation would be fair and equitable to all parties, in addition to taking into account procedural efficiency.
In this case, there is evidence which supports the conclusion that the disputed domain names are subject to common control. This evidence is that: (i) one of the disputed domain names redirected to the other disputed domain name, such that both disputed domain names resolved to the same content; and (ii) the registrant of record for one of the disputed domain names asserted that it had sold that domain name to the registrant of record for the other disputed domain name, and that other registrant did not deny the fact. The Panel is satisfied that both of the disputed domain names are under common control, and that it would be fair and equitable to all parties to permit this Complaint to proceed in relation to both of the disputed domain names. While it seems Demis Terel may have the final control of both disputed domain names, noting that Flaunt7, Vikyat Singh is one the registrants confirmed by the Registrar, the Panel will refer to Demis Terel, and Flaunt7, Vikyat Singh, as the Respondents.
Accordingly, the Panel permits this Complaint to proceed in the form in which it was filed.
B. Identical or Confusingly SimilarOnce the gTLD “.com” is ignored (which is appropriate in this case), each disputed domain name consists of the whole of the Complainant’s registered word trademark CARVANA, followed by either “markt” or “markts”, which are the German words for “market” and “markets”, respectively. The Complainant’s word trademark is clearly recognizable within the disputed domain names. The addition of the German words does not prevent a finding of confusing similarity of the disputed domain names with the Complainant’s trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate InterestsThe Respondents are not licensees of the Complainant, are not otherwise affiliated with the Complainant, and have not been authorized by the Complainant to use its CARVANA word trademark. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain names, or that they have, for any other reason, rights or legitimate interests in the disputed domain names. The evidence provided by the Complainant shows that the disputed domain names have been used to resolve to a website that contained the Complainant’s CARVANA word trademark and design trademark, and that purported to offer vehicles for sale in a very similar manner to the Complainant’s business. Given the confusing similarity of the disputed domain names to the Complainant’s trademark and the absence of any relationship between the Respondents and the Complainant, such a use of the disputed domain names is neither a bona fide use nor legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, and the Respondents have not rebutted this. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad FaithThe disputed domain names were registered many years after the Complainant first registered its CARVANA word trademark. It is inconceivable that the Respondents registered the disputed domain names ignorant of the existence of the Complainant’s trademark, given that each of the disputed domain names consist of the Complainant’s trademark followed by the German word for “market” or “markets”, and that each has been used in an attempt to impersonate the Complainant. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondents have used the disputed domain names in an attempt to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith.
7. DecisionFor 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,
Andrew F. Christie
Sole Panelist
Date: October 21, 2021