WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carvana, LLC v. Registration Private of Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-2256

1. The Parties

The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.

The Respondent is Registration Private of Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <ncarvana.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2020. On August 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 the Complainant on September 1, 2020, 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 September 2, 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 the Respondent of the Complaint, and the proceedings commenced on September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on October 5, 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

The Complainant is a leading e-commerce platform which was launched in 2013 and which is active in the buying and selling of used cars. It promotes and renders its online automobile dealership services and automobile online automobile financing services throughout the United States under its CARVANA trademarks and its official website “www.carvana.com”.

The Complainant holds several trademark registrations for CARVANA, in particular United States trademark registration CARVANA No 4,328,785 filed on April 11, 2011, and registered on April 30, 2013 for “online dealership featuring automobiles” in international class 35 and “online financing services in the field of automobile loans” in international class 36.

The disputed domain name was registered on May 15, 2020. It redirects to commercial websites including websites that offer automobile dealership services of other providers than the Complainant.

5. Parties’ Contentions

A. Complainant

According to the Complainant, this case is a textbook case of typosquatting. It alleges that the Respondent is known for registering domain names containing trademarks owned by third parties and is engaged in cybersquatting.

The Complainant states that the disputed domain name is identical to the Complainants CARVANA trademark, except that it adds a single letter “n” which is not sufficient to avoid the finding of confusing similarity. Consequently, the disputed domain name as a whole is confusingly similar to the Complainant’s CARVANA trademarks. This insignificant variation of the Complainant’s trademark CARVANA misdirects Internet users who make a typographical error and is commonly referred to as typosquatting or typo-piracy. The Complainant raises that Internet consumers are more likely to be misled into visiting virtual locations by the use of a confusingly similar domain name than consumers in a traditional retail context.

The Complainant further alleges that the Respondent is in no way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous and distinctive CARVANA trademark in any way or manner, trademark which is well-known in the United States. The CARVANA trademark is an invented English word which third parties would not legitimately choose unless seeking to create an impression of an association with the Complainant. Also, the Respondent is not known as Carvana or any variation thereof and is not the owner of a tradename, corporate name or trademark for Carvana or any variation thereof. In addition, the disputed domain name is registered for and is used to lure consumers to an imposter’s website for commercial gain. Consequently, the Respondent is not making any legitimate commercial use of the disputed domain name.

The Complainant is of the opinion that the disputed domain name was designed to trade on the reputation and goodwill of the Complainant and its CARVANA trademarks for financial gain. The Respondent utilizes the disputed domain name to divert potential users (a) away from the Complainant’s official website “www.carvana.com” (b) away from the Complainant’s authentic CARVANA brand services and (c) toward the Respondent’s website. Furthermore, the Respondent registered the disputed domain name and uses it for websites that automatically redirect to either (1) third party website that includes suspicious pop-up windows that appears to be distributing malwares or undesired applications or (2) a website that offers automobile dealership services directly competing with the Complainant. Nothing indicates that the Respondent would have any intellectual property rights in the disputed domain name. The Complainant also mentions that the Respondent has previously engaged in bad faith registration and use of other domain names incorporating the Complainant’s CARVANA trademark and that he had continued to register many other domain names comprising trademarks of well-known companies.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant showed it has trademark rights in CARVANA through several trademark registrations in the United States.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain name only differs from the Complainant’s trademark CARVANA through the addition of a letter “n” before “carvana”. The Complainant’s mark is nevertheless clearly recognizable and entirely contained in the disputed domain name, and consequently the disputed domain name is confusingly similar to the trademark.

Furthermore, the Complainant established that the Respondent registered several other domain names containing CARVANA with only slight differences which shows that this misspelling is intentional and which sustains the conclusion of confusing similarity (WIPO Overview 3.0, section 1.9). In a very similar case relating to the domain name <ucarvana.com> registered by the same Respondent, the Panel found that it was confusingly similar to the Complainant’s trademark (see Carvana, LLC v. Carolina Rodrigues, WIPO Case No. D2020-1611.

Considering the above, the Panel concludes that the first element required by paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods or services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.

The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name, notably stating that:

- The Complainant has never licensed or otherwise authorized in any way the Respondent to use the CARVANA trademark.

- The Complainant’s CARVANA trademark is well-known in the United States.

- CARVANA is an invented English word which third parties would not legitimately choose unless seeking to create an impression of an association with the Complainant.

- The Respondent is not known as CARVANA.

- The disputed domain name is registered for and is used to lure consumers to website of third parties for commercial gain.

Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.

The Respondent has chosen not to reply.

No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name.

In view of the above and in the lack of any response from the Respondent, the Panel is satisfied that the Complainant’s prima facie case is unrebutted, and that it is more than likely that the Respondent does not use the disputed domain name for a bona fide offering of goods or services.

Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As it was recognized by other panels, the Complainant is a well-established company in the United States which operates since 2013 under the tradename and trademark CARVANA.

The disputed domain name was registered on May 15, 2020, that is many years after the Complainant commenced business. In addition, previous UDRP panels have recognized the CARVANA trademark as being well-known in the United States (see Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ferel Demis, WIPO Case No. D2020-2032.

Furthermore, the Complainant evidenced that the Respondent registered several other domain names containing its trademark CARVANA.

Consequently, the Panel arrives to the conclusion that the Respondent knew of the Complainant’s trademarks and deliberately registered the almost identical disputed domain name (see WIPO Overview 3.0, section 3.2.2).

Furthermore, the case file shows that the disputed domain name redirected to third party websites that include suspicious pop-up windows that could be distributing malwares or undesired applications and to third party websites offering services competing with the Complainant. This obviously falls in the scope of bad faith use as defined by the Policy.

The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith in the circumstances of this proceeding.

In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service in the context of this case, is an indication that the Respondent intentionally hides its identity and uses the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6).

In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under 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 <ncarvana.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: October 20, 2020