WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Ferdit Jemelk Jemelk
Case No. D2020-2274
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 Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Ferdit Jemelk Jemelk, Germany.
2. The Domain Name and Registrar
The disputed domain name <carvana-europe.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 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 3, 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 25, 2020.
The Center appointed Peter Burgstaller as the sole panelist in this matter on September 29, 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 provides and operates a leading e-commerce platform for trading used cars under its mark CARVANA (Annex 5 to the Complaint).
The Complainant is owner of the following relevant United States trademark registrations (Annex 6 to the Complaint):
1. CARVANA (U.S. Registration No. 4,328,785), filed on April 11, 2011, and registered on April 30, 2013, for “online dealership services featuring automobiles” in International Class 35, and “online financing services in the field of automobile loans” in International Class 36;
2. CARVANACARE (U.S. Registration No. 4,971,997), filed on May 15, 2015, and registered on June 7, 2016, for “extended warranty services, namely service contracts; providing extended warranties on automobiles,” in International Class 36;
3. CARVANA (U.S. Registration No. 5,022,315), filed on January 7, 2016, and registered on August 16, 2016, for “shipping, pickup, and delivery services for automobiles,” in International Class 39;
4. CARVANA (fig) (U.S. Registration No. 6,037,292), filed on November 13, 2019, and registered on April 21, 2020, for “online dealership services featuring automobiles,” in International Class 35, “online financing services in the field of automobile loans; extended warranty services, namely, service contracts; providing extended warranties on automobiles,” in International Class 36, and “shipping, pickup, and delivery services for automobiles” in International Class 39.
Additionally, the Complainant is the registrant of the domain name <carvana.com>, which addresses its e-commerce platform enabling access to the products and services of the Complainant (Annex 4 to the Complaint).
The Respondent registered the disputed domain name on May 15, 2020, (Annex 1 to the Complaint; Registrar’s Verification from September 2, 2020).
The disputed domain name previously addressed a “carvana” website in German; presently the disputed domain name does not resolve to any website (Annex 2 to the Complaint).
5. Parties’ Contentions
The Complainant is the leading e-commerce platform for buying and selling used cars; it promotes and renders its online automobile dealership services, and online automobile financing services, throughout the United States under its well-known CARVANA registered marks and through its primary website <carvana.com>, which hosts its e-commerce platform. The Complainant delivers vehicles throughout the U.S. and also operates CARVANA vending machines located in major cities in the United States. It currently operates in more than 260 markets, covering more than 73% of the U.S. population and sold alone in 2019 more than 175,000 vehicles to retail customers with used vehicle sales revenue exceeding USD 3 billion. The Complainant’s website averages more than five million unique visitors each month.
The Complainant holds several trademark registrations for the CARVANA mark and variations thereof in the United States. 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 CARVANA marks. The CARVANA mark is a distinctive, coined term that is heavily advertised and well known.
The disputed domain name wholly incorporates the Complainant’s mark CARVANA and simply add the geographic term “europe” separated by a hyphen; this addition does not obviate confusing similarity under the Policy.
The Respondent is not in any 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 marks in any way or manner. Moreover, the Respondent has no means to establish that it is or ever has been commonly known as “Carvana” or any variation thereof and the Respondent’s use of the disputed domain name is purely commercial and is not legitimate.
The registration of the disputed domain name was plainly designed to trade on the reputation and goodwill of the Complainant and its registered CARVANA marks for financial gain. The Respondent utilized the disputed domain name to divert potential users away from the Complainant’s primary website and its business. The disputed domain name was registered by the Respondent, previously displayed a counterfeit “carvana” website in German, and presently displays an inactive website that does not resolve to any page. Moreover, the Respondent’s complete lack of intellectual property rights in the disputed domain name at issue further demonstrates bad faith in adopting and using it. Because of the fame and distinctiveness of the CARVANA marks, the Respondent must have known of the Complainant and its registered marks when registering the disputed domain name.
Summing up: the Respondent uses unauthorized the Complainant’s registered trademarks, as the disputed domain name completely incorporates the Complainant’s registered CARVANA marks and simply adds a geographic term. The disputed domain name wholly incorporates and is, therefore, confusingly similar to the Complainant’s registered CARVANA marks. The Respondent lacks any rights or legitimate interests in the Complainant’s registered CARVANA marks; and the Respondent registered and continues to use the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that disputed domain name is confusingly similar to the Complainant’s registered distinctive marks CARVANA since it entirely contains this trademark and only adds the mere geographic term “europe”, separated by a hyphen.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks CARVANA in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The Complainant has various trademark rights in the term CARVANA since 2011 (filing date) onwards and offers its products and services especially on its website under the domain name <carvana.com>. The disputed domain name was registered on May 15, 2020, by the Respondent.
The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights since the mark CARVANA is a distinctive and non-descriptive term; hence, this leads to the necessary inference of bad faith. This impression is supported by the fact that the Respondent only added the geographical term “europe” and displayed a counterfeit “carvana” website in German, which even strengthens the impression that the disputed domain name is in some way connected to the Complainant.
These facts lead this Panel to the conclusion that the disputed domain name was registered in bad faith by the Respondent.
Although the disputed domain name resolves currently to an inactive website and there is no evidence that presently it is actively used, it previously addressed a counterfeit “carvana” website in German using the disputed domain name to divert potential users away from the Complainant’s primary website and its business and “free ride” on the reputation of the Complainant’s name and trademark CARVANA and thus the use of the disputed domain name is suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s website). This clearly constitutes bad faith use under paragraph 4(a)(iii) of the Policy.
However, not only this previous active use of the disputed domain name by the Respondent leads this Panel to the conclusion of bad faith use, but also the present passive holding of the disputed domain name, since the Respondent has failed to present any evidence of any good faith use in this respect so that there is no plausible reason for authorized future active usage with regard to the disputed domain name by the Respondent; such inactivity is also within the concept of paragraph 4(a)(iii) of the Policy and constitutes bad faith use.
On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
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 <carvana-europe.com> be transferred to the Complainant.
Date: October 6, 2020