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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carvana, LLC v. Clyde Yeroomian, SMG

Case No. D2019-2360

1. The Parties

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

The Respondent is Clyde Yeroomian, SMG, United States.

2. The Domain Names and Registrar

The disputed domain names <carvanna.info>, <carvanna.net>, and <carvanna.org> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names and providing the corresponding contact details.

The Center verified that the 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 October 3, 2019. In accordance with the Rules, paragraph 5, the due date for a response was October 23, 2019. The Respondent did not submit a response. Accordingly, the Center notified the parties of the Respondent’s default on October 24, 2019.

The Center appointed Marylee Jenkins as the sole panelist in this matter on November 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.

4. Factual Background

Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of several trademark registrations for the word mark CARVANA (U.S. Trademark Registration No. 4,328,785 (filed on April 11, 2011; registered on April 30, 2013) in classes 35 and 36, and U.S. Trademark Registration No. 5,022,315 (filed on January 7, 2016; registered on August 16, 2016) in class 39) as well as the word mark CARVANACARE (U.S. Trademark Registration No. 4,971,997 (filed on May 15, 2015; registered on June 7, 2015) in class 36) in the United States (individually and collectively referred to as the “Complainant’s Mark”). The Complainant also owns the domain name <carvana.com> and markets its e-commerce platform and services for buying and selling used cars at the website accessible at this domain name.

The Domain Names <carvanna.info>, <carvanna.net>, and <carvanna.org> were all registered on January 28, 2019. The Domain Names all redirect to the same active website at “www.smgcars.com” entitled “Summit Motor Group” which offers consumers the ability to buy, lease, and sell cars.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is the leading e-commerce platform for buying and selling used cars and promotes its online automobile dealership services and online automobile financing services throughout the United States under its Complainant’s Mark and via its website at the domain name <carvana.com>. The Complainant states that it has grown rapidly since launching in January 2013 and currently operates in more than 130 markets having sold more than 80,000 vehicles to retail customers in the first half of 2019. The Complainant further states that it 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 Complainant’s Mark.

The Complainant alleges that the registrations for the Domain Names should be transferred to the Complainant because each wholly incorporates a common misspelling of the Complainant’s Mark and that the Domain Names are identical to the Complainant’s Mark except that they each add an extra “n” to the mark. The Complainant further asserts that the Respondent’s use of confusingly similar Domain Names seeks to exploit likely typing mistakes on the part of Internet users and particularly so since the Complainant operates its core business online.

The Complainant states that the Respondent does not have rights or legitimate interests in the Domain Names within the meaning of paragraph 4(a) of the Policy since: (i) the Respondent is not authorized by the Complainant to use the Domain Names in dispute; (ii) the Complainant’s Mark is well-known throughout the United States; (iii) there is no indication that the Respondent is known under the Domain Names and the Respondent has admitted to not “practice any business under this name”; (iv) the Domain Names are identical or confusingly similar to the Complainant’s Mark and serve as “bait” to attract customers to the Respondent’s site; and (v) the Domain Names are primarily descriptive of the Complainant’s services as it incorporates the Complainant’s Mark.

The Complainant further alleges that the Domain Names are plainly designed to trade on the reputation and goodwill of the Complainant and the Complainant’s Mark for financial gain by diverting potential users away from the Complainant’s primary website and toward the Respondent’s own site for its own commercial benefit, thereby constituting bad faith registration and use under the Policy. The Complainant also states that the Respondent’s complete lack of intellectual property rights in the Domain Names further demonstrates bad faith in adopting and using them thus resulting in “opportunistic bad faith”. Additionally, the Complainant alleges that typosquatting itself is evidence of relevant bad faith registration and use, and indicates that the Respondent had actual knowledge of the Complainant and its business. Finally, the Complainant asserts that the Respondent registered the Domain Names to profit off of the Complainant’s Mark and consumer confusion by redirecting Internet users to a competitor website, thus also constituting bad faith registration and use of the Domain Names.

B. Respondent

No response was received from the Respondent with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

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

(ii) the domain name holder 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.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domains (“carvanna”) of the Domain Names shows that all of the domains comprise the Complainant’s Mark CARVANA in its entirety with the addition of the letter “n”. This misspelling by a single letter of the Complainant’s federally registered mark CARVANA does not prevent the Domain Names from being considered confusingly similar to the Complainant’s federally registered mark. In addition, the review of the Complainant’s trademark registrations for the word mark CARVANA in multiple classes shows that such registrations well predate the Respondent’s registrations of the Domain Names. Such misspellings along with the evidence of the Complainant’s own web site at the domain name <carvana.com> show that the Respondent was clearly aware of the Complainant’s Mark and web site when registering these Domain Names all on the same date. The fact that the Respondent registered “carvanna” in the Top-Level Domains (“TLDs”) “.info”, “.net” and “.org”, provides no significance in determining whether the Domain Names are identical or confusingly similar to the Complainant’s Mark.

Based on the submitted evidence and the uncontested assertions made by the Complainant, the Panel concludes that these Domain Names are confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed, or authorized the Respondent to register or use the Complainant’s Mark in any manner. Nor has evidence been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Names. In addition, no evidence has been presented to suggest that the Complainant has ever allowed or permitted the Respondent to register or use a domain name incorporating the Complainant’s Mark in any fashion. Rather it is apparent that the Complainant had well-established rights in the Complainant’s Mark in the United States at the time of the Respondent’s registrations of the Domain Names in January 2019 and that the Respondent nevertheless registered the Domain Names. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent is misleadingly diverting consumers to its commercial website offering similar types of services in an apparent attempt to profit from the Internet traffic misdirected to these Domain Names. Such uses of the Domain Names by the Respondent cannot be considered as being legitimate noncommercial or fair use of these Domain Names.

The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the Domain Names and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

No evidence has been presented that the Respondent are commonly known by the Domain Names or that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant's Mark. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or were making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services. Rather, the Respondent redirects all of the Domain Names to its own commercial web site offering similar types of services in an attempt to confuse users as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site. As the uncontested evidence shows, the Respondent is not making any legitimate noncommercial or fair use of the Domain Names. A review of the Complainant’s trademark registrations for the word mark CARVANA in multiple classes shows that such registrations well predate the Respondent’s registrations of the Domain Names. The Panel finds that the Respondent clearly had knowledge of the Complainant and the Complainant’s Mark based on the misspelling of the Complainant’s Mark in all of these Domain Names which were all registered on the same day.

Additionally, the Respondent has engaged in a pattern of conduct of registering multiple Domain Names incorporating the trademarks of others. When viewed with the evidence of the Complainant’s Mark having been registered for many years and arguably well-known along with the number of Domain Names registered by the Respondent in this proceeding that are confusingly similar to the Complainant’s Mark, it is apparent that the Respondent had actual knowledge of the Complainant’s Mark and its rights therein at the time of registering the Domain Names. Coupled with the Complainant’s assertions and the uncontested evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its commercial website so as to create a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement thereof, such actions accordingly confirm a finding of bad faith registrations and uses of these Domain Names by the Respondent in accordance with paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent has registered and is using these Domain Names in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names, <carvanna.info>, <carvanna.net>, and <carvanna.org>, be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: December 20, 2019

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