WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2020-2905

1. The Parties

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

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

2. The Domain Name and Registrar

The disputed domain name <karvanna.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 November 3, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 5, 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 November 5, 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 November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2020.

The Center appointed Alexandre Nappey as the sole panelist in this matter on December 22, 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 CARVANA LLC, a U.S. company, offering vehicle dealership services and financing services online under its trademark CARVANA.

The Complainant currently operates in more than 260 markets, covering more than 73% of the U.S. population.

The Complainant owns several trademarks composed of the term “CARVANA”, among which:

- U.S. Registration CARVANA No. 4,328,785, filed on April 11, 2011 and registered on April 30, 2013, in classes 35 and 36;
- U.S. Registration CARVANACARE No. 4,971,997, filed on May 15, 2015 and registered on June 7, 2015 in class 36;
- U.S. Registration CARVANA No. 5,022,315, filed on January 7, 2016 and registered on August 16, 2016 in class 39;
- U.S. Registration CARVANA No. 6,037,292, filed on November 13, 2019 and registered on April 21, 2020 in classes 35, 36 and 39.

The disputed domain name is <karvanna.com> registered on September 11, 2020.

At the time the Complaint was filed, the disputed domain name was redirecting to a page with click-through advertising links to third-party commercial websites.

5. Parties’ Contentions

A. Complainant

The Complainant first alleges that the disputed domain name <karvanna.com> is confusingly similar to its earlier trademarks CARVANA, to the point of creating confusion.

- The disputed domain names is phonetically identical to Complainant’s CARVANA trademarks.

- The Domain Name is identical to Complainant’s CARVANA trademarks, except that it begins with the phonetically equivalent “k” and uses a double “n” in the mark. This misspelling of Complainant’s Mark does not obviate confusion.

Then the Complainant alleges that the Respondent has no legitimate rights or interests in the disputed domain name.

-The Respondent is not in any way associated with Complainant and has never sought nor received authorization or license to use Complainant’s valuable, famous and distinctive CARVANA Marks in any way or manner.

- Complainant’s CARVANA Marks are well-known: it is clear that the Respondent would have been aware of the Complainant’s CARVANA mark when registering the disputed domain name.

- Respondent has no means to establish that it is or ever has been commonly known as “Carvana” or any variation thereof.

- the Domain Name wholly incorporates a typo-variation of Complainant’s CARVANA Marks and resolves to parked pages with links to competing automobile dealership, insurance, and financing services: the Domain Name is registered for and is used to lure consumers to an imposter’s site for commercial gain.

- the CARVANA mark is an invented English word, and as such, third parties would not legitimately choose this name unless seeking to create an impression of an association with the Complainant.

Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

- the Domain Name is plainly designed to trade on the reputation and goodwill of Complainant and its CARVANA Marks for financial gain. Respondent utilizes the infringing 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 Domain Name, an obvious misspelling of Complainant’s CARVANA Marks, and is using it to redirect Internet users to parked pages with links to third-party websites.

The third-party websites include websites that directly compete with Complainant.

- Respondent has absolutely no legitimate trademark service mark or other intellectual property rights in or to the disputed Domain Name, or any similar marks or names.

- Respondent is a serial cybersquatter who has engaged in a pattern of registering domain names to profit from trademark owners’ names and consumer confusion.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(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.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in CARVANA (which predate the registration of the disputed domain name).

The Panel finds that the disputed domain name <karvanna.com> is confusingly similar to the registered CARVANA trademarks owned by the Complainant.

Indeed, the disputed domain name is phonetically identical to the Complainant’s CARVANA trademarks.

The only difference between the earlier trademarks and the disputed domain name is the substitution of the first letter “c” by the letter “k” which are phonetically identical, and the addition of a second “n” next to the first one, so as the disputed domain name will be read and pronounced by the public in the same way as the earlier trademarks.

See decisions in previous cases: Microsoft Corp. v. Mike Rushton, WIPO Case No. D2004-0123 (concerning <mikerosoft.net>, transfer); Kanaway LLC v. Domains By Proxy, LLC, WIPO Case No. D2018-2246 (concerning <canaway.com>, transfer).

Therefore, in the present case, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate 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.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its CARVANA trademarks.

It results from the circumstances that the Respondent does not own any right on the trademark CARVANA nor is commonly known by the disputed domain name.

Moreover, the Respondent has been involved in numerous previous cases and even described as a serial cybersquatter who has registered numerous domain names incorporating well-known trademarks. See Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered, or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

CARVANA is a distinctive trademark and there is no evidenced relationship between the Parties, and since the disputed domain name redirects to various third-party commercial websites, including websites that directly compete with Complainant, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name <karvanna.com>.

Moreover, it appears that the Respondent has been the unsuccessful defendant in numerous proceedings under the Policy.(e.g.: Carvana, LLC v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2756, December 15, 2020; Government Employees Insurance Company v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2869, December 11, 2020; Proctor.IO Incorporated v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2692, December 2, 2020; Sanofi v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2613, November 23, 2020).

Most of these cases involved well-known trademarks and some of them already involve CARVANA Complainant’s trademark.

See: Carvana, LLC v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-2756, and Carvana, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1376.

It is then reasonable to infer that the Respondent has engaged in a pattern of cybersquatting and typosquatting, such as in this case.

In the light of the above, the Panel finds that the Respondent’s use of the disputed domain name cannot therefore constitute use of the disputed domain name in the bona fide offering of the goods.

Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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, <karvanna.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: January 5, 2021