WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carvana, LLC v. Carolina Rodrigues
Case No. D2020-1611
1. The Parties
The Complainant is Carvana, LLC, of United States of America (“USA”), represented by Bryan Cave Leighton Paisner LLP, United States of America.
The Respondent is Carolina Rodrigues, Panama.
2. The Domain Name and Registrar
The disputed domain name <ucarvana.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 June 18, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 June 29, 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 June 29, 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 July 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2020.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on August 12, 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 following summary set out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a company based in the USA and provides an e-commerce platform primarily for the buying and selling of used cars. The Complainant also provides automobile financing services and offers extended warranty services and gap insurance services for the vehicles which it sells.
4.2 The Complainant launched its services in January 2013 and currently operates in more than 140 markets. In 2019, the Complainant sold more than 175,000 vehicles to retail customers with used vehicles sales revenue exceeding USD 3 billion.
4.3 The Complainant operates its business under its CARVANA trademark and through its primary website, <carvana.com>, which hosts its e-commerce platform. The Complainant’s website averages more than 5 million unique visitors each month. The Complainant also operates CARVANA Vending Machines, located in major cities in USA.
4.4 The Complainant has registered the following trademarks which incorporate the word CARVANA and its variations in USA:
|
Trademark |
Registration No. |
Registration Date |
Classes |
Description |
|
CARVANA |
4,328,785 |
April 30, 2013 |
35, 36 |
Online dealership services featuring automobiles (Class 35) |
|
CARVANACARE |
4,971,997 |
June 7, 2016 |
36 |
Extended warranty services, namely service contracts; providing extended warranties on automobiles (Class 36) |
|
CARVANA |
5,022,315 |
August 16, 2016 |
39 |
Shipping, pickup, and delivery services for automobiles (Class 39) |
 |
6,037,292 |
April 21, 2020 |
35, 36, 39 |
Online dealership services featuring automobiles (Class 35) |
4.5 The disputed domain name resolves to a parked page displaying links to third-party commercial websites that offer services which compete with the Complainant’s core businesses.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant’s contentions may be summarized as follows:
(a) The CARVANA trademark is well known and the Complainant has expended and continues to expend, time and effort promoting, marketing, advertising and building consumer recognition and goodwill in respect thereof.
(b) The disputed domain name is identical or confusingly similar to the Complainant’s CARVANA trademark, save for the addition of the letter “u”. This addition does not obviate confusion in the circumstances.
(c) The use of the disputed domain name seeks to exploit typing mistakes on the part of Internet users. Moreover, the use of the disputed domain name seeks to mislead, confuse and deceive Internet users that there exists an association between the Complainant’s offerings and the disputed domain name. These misleading act would divert customers or potential customers away from the Complainant’s <carvana.com> website as well as tarnish and dilute the Complainant’s goodwill in the CARVANA trademark.
(d) The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or license to use the Complainant’s CARVANA trademark in any way or manner.
(e) The Respondent is not commonly known as “Carvana” or any variations thereof and neither does the Respondent have any legitimate trademark, service mark, or other intellectual property rights to the CARVANA trademark or any similar marks.
(f) The CARVANA trademark is an invented English word and the Respondent would not have legitimately chosen this name unless it seeks to create an impression of an association with the Complainant.
(g) The Respondent is a serial cybersquatter and is not making any legitimate noncommercial or fair use of the disputed domain name. The Respondent has engaged in a pattern of registering domain names in which the Respondent does not have legitimate rights. These include other domain names which also incorporate the CARVANA trademark or typo variations thereof.
(h) The disputed domain name resolves to a parking page displaying links to third party commercial websites that offer services which compete with the Complainant’s services. The Respondent’s act of diverting users to its website using the disputed domain name is to generate traffic and/or to generate sale commissions for its own commercial benefit.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the CARVANA trademark. These include registrations of the CARVANA (and variations thereof) trademark in USA in various classes and evidence of widespread use since 2013.
The disputed domain name comprises the Complainant’s CARVANA trademark in its entirety with the addition of a single letter “u”. The resulting term, “ucarvana”, carries no meaning except as a typo of “carvana”. The addition does not change the meaning nor the overall impression of the Complainant’s CARVANA trademark. In these circumstances, it would appear that whilst not identical, the disputed domain name is confusingly similar to the Complainant’s mark.
The Panel therefore accepts the Complainant’s contention that the addition of a single letter “u” to the Complainant’s CARVANA trademark in the disputed domain name does not remove a finding of confusing similarity. This is consistent with the findings of various other UDRP decisions involving the issue of additional letters to trademarks including Skyscanner Limited v Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018 which involved the domain name <lskyscanner.com> as compared to the complainant’s SKYSCANNER trademark; and OLX, Inc. v Jose Antonio Silva Nunes, WIPO Case No. D2014-1305, where the panel found that the domain name <iolx.com> was confusingly similar to the complainant’s OLX trademark.
In the circumstances, the Panel is satisfied that the Complainant has established Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel has considered the evidence and contentions put forward by the Complainant to establish a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. In the absence of contradictory evidence, it would appear that:
(a) the Respondent is not licensed or authorized by the Complainant to use the CARVANA trademark or variations thereof and there is no indication that the Respondent has any other rights to the CARVANA trademark or is otherwise known by the name CARVANA.
(b) by incorporating the CARVANA trademark as a main feature of the disputed domain name, there is a strong suggestion of an intent to confuse, deceive or to associate the <ucarvana.com> website with the Complainant and its businesses.
(c) the use of the <ucarvana.com> website as a parking page with links to third party commercial websites that compete with the Complainant’s businesses, does not imply an intent of making legitimate noncommercial use of the disputed domain name.
Thus, the Panel is unable to find any reasonable grounds to justify rights or legitimate interests on the part of the Respondent to use the word CARVANA as a main feature of the disputed domain name. In this regard, the Panel finds that the Complainant satisfies the burden of proving Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s primary business is an online automobile dealership service and automobile financing service conducted through its website located at <carvana.com>. The online business was first launched in January 2013 and the evidence adduced by the Complainant indicates that the CARVANA trademark was first registered by the Complainant on April 30, 2013.
The Complainant contends that the CARVANA trademark is well known as a result of its widespread and long use, wide network, high Internet traffic and sales figures in terms of number of used cars sold and revenue in connection therewith.
The Respondent, on the other hand, appears to have registered the disputed domain name only in May 2020, long after the registration and use of the CARVANA trademarks. The disputed domain name resolves to a website commonly referred to as a parking page. The website in issue appears to be a monetized parking page with links to third party commercial websites. The Complainant contends that these commercial websites compete with the services offered by the Complainant.
The circumstances highlighted above indicate an attempt by the Respondent to usurp and freeride on the reputation and goodwill of the Complainant’s CARVANA trademark for commercial benefits by confusing and diverting Internet users through the use of the disputed domain name. There have been numerous UDRP decisions which support the view that generating traffic and/or sales commissions for commercial benefit constitutes bad faith (see Microsoft Corporation v Zerbo, WIPO Case No. D2005-0644; Dr. Ing.h.c.F.Porsche AG v Terkin, WIPO Case No. D2003-0888, Hugo Boss Trade Mark Management GmBH & Co.KG, et al v Private Registration / George Kara, WIPO Case No. D2015-0666, Volkswagen AG v Nowack Auto und Sport-Oliver Nowack, WIPO Case No. D2015-0070).
The Panel also notes that the Respondent has a track record of registering numerous domain names comprising third party trademarks including some of the world’s most well-known brands. These cases include Skyscanner Limited v Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018; Nationwide Mutual Insurance Company v Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2144; Starbucks Corporation v Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991). The pattern of conduct as suggested by these cases is one of bad faith on the part of the Respondent. It paints a picture of a person who is commonly referred to as a cybersquatter. The Panel is therefore of the considered view that the registration of the disputed domain name in this instance merely forms a part of the Respondent’s portfolio of domain names which wholly or partially incorporate third party trademarks or main features thereof.
In light of the circumstances surrounding the registration and use of the disputed domain name by the Respondent and further exacerbated by the Respondent’s own blemished pattern of conduct as discussed above, the Panel finds that the Complainant has established Paragraph 4(a)(iii) of the Policy as against the Respondent.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <ucarvana.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Date: August 26, 2020