Complainant is CarGurus, Inc., United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
Respondent is WhoisGuard, Inc., Panama / Stacy Miller, United States.
The disputed domain name <order-cargurus.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 11, 2019 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 June 11, 2019.
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 June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 12, 2019. 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.
Complainant, founded in 2006, describes itself as “an online automotive marketplace”. By virtue of its algorithms and data analytics, Complainant alleges, it “provides unbiased insights on car pricing, dealer reputation, and vehicle history” for consumers shopping for a car. Complainant also asserts that it is the largest online automotive shopping site in the United States, and that it also operates sites in Canada, the United Kingdom, Spain, Italy, and Germany.
Complainant holds various registered trademarks in various jurisdictions for the mark CARGURUS, including United States Patent and Trademark Office Registration No. 4,807,853 for the word mark CARGURUS (registered on September 8, 2015; first use in commerce December 31, 2007).
Complainant’s main website is located at “www.cargurus.com”. As demonstrated by evidence annexed to the Complaint, Complainant also maintains a prominent social media presence at sites such as Twitter, Instagram, Pinterest, and YouTube.
The Domain Name was registered on March 14, 2019. The Domain Name resolves to a website which, Complainant alleges, “consists entirely of a screenshot of Complainant’s website”. According to Complainant, Respondent “is seeking to create a false association with Complainant” and intends “to attract Internet users to its website to capitalize on the goodwill of Complainant’s well-known CARGURUS Marks for its own commercial and fraudulent gain by creating a likelihood of confusion with Complainant’s marks”. Complainant places in the record some instances of consumer confusion arising from Respondent’s website. According to Complainant, “Respondent is contacting consumers who inquire about vehicles and misrepresenting to them that the purchase will be covered by the Complainant’s Vehicle Purchase Protection Program”. Complainant alleges that Respondent uses the Domain Name to set up an email address, from which Respondent sends a fraudulent invoice to the consumer.
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent has not replied to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the mark CARGURUS through registration and use demonstrated in the record.
The Panel concludes further that the Domain Name is confusingly similar to the CARGURUS mark. The Domain Name incorporates the distinctive CARGURUS mark in its entirety and surrounds that dominant word with the descriptive word “order”. This additional word does little or nothing to diminish the confusing similarity between the CARGURUS mark and the Domain Name.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a 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 Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain her bona fidesvis-à-vis the Domain Name. The Domain Name resolves to a website that mimics Complainant’s site. Respondent also uses the Domain Name for an email address from which, the undisputed record indicates, Respondent sends fraudulent invoices to consumers who believe that they are dealing with Complainant and availing themselves of Complainant’s well-known services. This is obviously not a legitimate use of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Respondent obviously had Complainant’s CARGURUS mark in mind when registering the Domain Name, given Respondent’s activities (setting up a website that mimics Complainant’s site and using the Domain Name for an email address to communicate with confused consumers looking for Complainant’s automotive on-line shop). Given the foregoing activities, which on this record appear to be unauthorized and fraudulent, it is also clear that Respondent has used the Domain Name in bad faith, within the meaning of the above-quoted Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <order-cargurus.com> be transferred to Complainant.
Robert A. Badgley
Date: July 26, 2019
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