Complainant is Carvana, LLC, United States of America (“United States” or “U.S.”), represented by Bryan Cave Leighton Paisner, United States.
Respondent is Privacydotlink Customer 2659160, Cayman Islands, United Kingdom / Gary Sandor, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2020, 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 Complainant on September 29, 2020 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 October 1, 2020. 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 October 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 9, 2020. The Center appointed Colin T. O’Brien as the sole panelist in this matter on November 19, 2020. 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 for buying and selling used cars. Complainant owns several trademark registrations for its CARVANA mark and variations thereof in the United States including: CARVANA (U.S. Registration No. 4,328,785), filed on April 11, 2011 and registered on April 30, 2013, for “online dealership services featuring automobiles” in International Class 35, and “online financing services in the field of automobile loans” in International Class 36; and CARVANACARE (U.S. Registration No. 4,971,997), filed on May 15, 2015 and registered on June 7, 2015, for “extended warranty services, namely service contracts; Providing extended warranties on automobiles,” in International Class 36. The disputed domain name was registered on April 22, 2016 and currently does not resolve to an active website. However, according to evidence submitted by Complainant, the disputed domain name used to redirect to different third party websites. Complainant owns and operates a website at “www.carvana.com”. 5. Parties’ Contentions A. Complainant Complainant is the leading e-commerce platform for buying and selling used cars. Complainant promotes and renders its online automobile dealership services and online automobile financing services throughout the United States under its well-known CARVANA mark and through its primary domain name, Complainant has grown rapidly since launching in January 2013 and currently operates in more than 260 markets, covering more than 73 percent of the U.S. population. In 2019 Complainant sold more than 175,000 vehicles to retail customers with used vehicle sales revenue exceeding USD 3 billion. Complainant’s website averages more than 5 million unique visitors each month. Complainant has expended, and continues to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in its extremely valuable and famous CARVANA brand goods and services under and in connection with its highly recognized and famous CARVANA marks. The disputed domain name is identical to Complainant’s CARVANA marks, except that the Top-Level Domain (TLD) is “.co” instead of “.com.” Respondent’s use of the confusingly similar disputed domain name seeks to exploit likely typing mistakes on the part of Internet users who are looking for Complainant’s primary website at “www.carvana.com”, through the slight variation of “.com” and “.co.” Respondent seeks to exploit consumer confusion and Complainant’s fame and goodwill by fully incorporating Complainant’s CARVANA mark in the disputed domain name. This is particularly so since Complainant operates its core business online through its website at “www.carvana.com”. Respondent is not in any way associated with Complainant and has never sought nor received authorization or a license to use Complainant’s valuable, famous and distinctive CARVANA marks in any way or manner. Complainant’s CARVANA marks are well-known throughout the United States. Respondent has no means to establish that it is or ever has been commonly known as “Carvana” or any variation thereof. Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “Carvana” or any variation thereof. Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in or to any of the CARVANA marks or any similar marks. The disputed domain name is registered for and is used to lure consumers to an imposter’s site for commercial gain. Respondent is not making any legitimate noncommercial use of the disputed domain name. Respondent’s use of the disputed domain name is purely commercial and is not legitimate. Complainant has not licensed or otherwise permitted Respondent to use any of Complainant’s trademarks or to apply for or use any domain name incorporating any of those marks. Respondent adopted and continues to use the disputed domain name that wholly incorporate Complainant’s CARVANA mark for the illegal and improper purpose of: (i) illegally trading upon Complainant’s goodwill to confuse, mislead, deceive and divert customers; and (ii) intentionally tarnishing and diluting Complainant’s valuable and well-known trademark. The CARVANA mark is an invented English word, and as such, third parties would not legitimately choose this name particularly in connection with click-through links concerning automobile sales and financing unless seeking to create an impression of an association with Complainant. The disputed domain name is plainly designed to trade on the reputation and goodwill of Complainant and its CARVANA Marks for financial gain. Respondent utilizes the disputed domain name to divert potential users (a) away from Complainant’s primary website at “www.carvana.com”, (b) away from Complainant’s authentic CARVANA brand services, and (c) toward Respondent’s website. Respondent registered the disputed domain name, which is identical to Complainant’s CARVANA marks, and uses it for a website that automatically redirects to third-party commercial websites. The disputed domain name automatically redirects to a website that offers automobile dealership services directly competing with Complainant. Respondent continues to use Complainant’s CARVANA marks to draw users to Respondent’s website, create confusion, and improperly reap commercial profit through diverted sales. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated it owns registered trademark rights in the CARVANA mark and that no other entity has rights or uses the mark. The TLD“.co” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the disputed domain name is identical to a mark in which Complainant has rights. B. Rights or Legitimate Interests Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. Complainant has also presented evidence that while the CARVANA mark is a somewhat new mark the coined term has become very well-known to the public. The fact that Respondent obtained the disputed domain name after Complainant had begun using the CARVANA mark indicates that Respondent sought to obtain piggy-back on the CARVANA mark’s fame in order to make money off of dynamic redirection or to make a windfall by selling the disputed domain name to the only legitimate owner, namely Complainant. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name rather the evidence suggests that it was registered to make an undue profit based on Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafeiWIPO Case No. D2013-1556. In the absence of any evidence rebutting Complainant’s prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered after Complainant first registered and used its CARVANA mark, which has achieved a remarkable amount of fame in such a short period of time. The evidence on the record provided by Complainant with respect to the extent of use of its coined CARVANA mark, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, Respondent most likely knew of Complainant’s CARVANA mark, and knew that it had no rights or legitimate interests in the disputed domain name. Complainant has provided evidence that the disputed domain name redirected to other websites, which offer services identical to those that are offered by Complainant. This establishes Respondent acquired the disputed domain name primarily for the purpose of commercial gain, which is evidence of registration and use of the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Colin T. O’Brien
Sole Panelist
Date: December 3, 2020
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