WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carvana, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd
Case No. D2020-2323
1. The Parties
The Complainant is Carvana, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States, / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, Panama.
2. The Domain Name and Registrar
The disputed domain name <carvaana.com> (the “Domain Name”) 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 September 4, 2020. On September 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 9, 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 10, 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 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2020.
The Center appointed Jeremy Speres as the sole panelist in this matter on October 16, 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 has, since 2013, operated as an ecommerce platform for trade in used cars under the CARVANA mark in the United States. The Complainant promotes and renders car dealership, financing and insurance services through its primary website at “www.carvana.com”. The Complainant operates in more than 260 markets covering more than 73% of the United States population. In 2019, the Complainant sold more than 175,000 cars to retail customers, with used car revenue exceeding USD 3 billion.
The Complainant owns several registered trade marks in the United States consisting of or incorporating the word “carvana”, the earliest and most relevant of which is Registration No. 4328785 for the word mark CARVANA which registered on April 30, 2013 in classes 35 and 36.
The Domain Name was registered on January 11, 2018 and, as at the date of lodging of the Complaint and drafting of this Decision, resolved to a parked page displaying click-through advertisements.
5. Parties’ Contentions
The Complainant contends as follows. The Domain Name is confusingly similar to the Complainant’s well-known CARVANA mark given that it incorporates an obvious misspelling of the mark, merely using a double rather than a single “a”, which constitutes typosquatting.
The Respondent has no rights or legitimate interests in the Domain Name: the Domain Name is unauthorised; the Complainant’s mark is well known; the Respondent is not commonly known by the Complainant’s mark and has not procured any registrations or trade names for it; and being confusingly similar to the Complainant’s mark, the Domain Name is being used to lure consumers to a commercial site.
The Domain Name was registered and is being used in bad faith: the Respondent uses the Domain Name, which is obviously connected to the Complainant, to divert customers away from the Complainant, using advertisements for third parties generating revenue for the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant’s registered mark. It is well established that where a domain name consists of a clear misspelling of a trade mark such that the mark is recognisable, as in this case, the domain name will be considered confusingly similar. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): this includes “the addition [...] of other terms”. Here, the additional “a” does not serve to differentiate the overall impression of the Domain Name, which remains aurally and visually nearly identical to the mark. Numerous UDRP panels have found that the addition of a single, duplicative letter does not prevent a finding of confusing similarity (Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631; Association des Centres Distributeurs E. Leclerc v. Joe Shamji, WIPO Case No. D2018-2645).
The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has made out a prima facie case which the Respondent has failed to rebut.
The Complainant’s evidence establishes that the Complainant’s CARVANA mark was used extensively and enjoyed considerable goodwill in the United States prior to registration of the Domain Name. Such evidence consists primarily of an annual report filed with the United States Securities and Exchange Commission (“SEC”) for the fiscal year ended December 31, 2019. The registration of the Domain Name predates that fiscal year, thus on its face the SEC filing does not speak to use of the Complainant’s mark and its reputation prior to registration of the Domain Name.
However, if the SEC filing is scrutinised, it is clear that a) results and sales figures are provided for fiscal years 2017 and 2018, which are no less impressive than those for 2019; and b) use of the mark from 2013 is certified. The SEC filing is certified as true and correct by the Complainant’s Chairman, Chief Executive and Chief Financial Officers. The Panel’s own searches corroborate use of the mark from 2013 (UDRP panels may undertake limited factual research into matters of public record, see WIPO Overview 3.0 at section 4.8). The Complainant has succeeded in various UDRP proceedings in respect of the mark at issue here, including one from 2018. Various UDRP panels have accepted that the Complainant’s mark is well known: Carvana, LLC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-1533; Carvana, LLC v. Nick Dillman, WIPO Case No. D2020-1483. It is thus accepted that the Complainant’s mark was used extensively and well known in the United States prior to registration of the Domain Name.
The Domain Name is confusingly similar to the Complainant’s well-known, registered mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the Complainant’s mark for the purposes of paragraph 4(c)(ii) of the Policy. The only evidence of use of the Domain Name, a typo of the Complainant’s mark, is that of redirection to a parked page comprising advertisements linked to third-party commercial websites.
Although not raised by the Complainant, the Panel has independently established the following:
(1) The Hypertext Markup Language (“HTML”) code for the page to which the Domain Name redirects shows that the page serves advertisements utilising the Google AdSense program on a pay-per-click (“PPC”) basis; and
(2) Such advertisements include those for car dealerships that compete with the Complainant.
UDRP panels have found that use of a domain to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the complainant’s mark or otherwise mislead users (WIPO Overview 3.0 at section 2.9). The Panel has also searched the Internet Archive, which contains no historical evidence of use of the Domain Name that might otherwise confer rights or legitimate interests upon the Respondent.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s mark was in use and well known long in advance of registration of the Domain Name, which comprises a typo of the Complainant’s mark. The Complainant’s mark is an invented, inherently distinctive term. It is thus unlikely that the Respondent registered the Domain Name for its semantic value as opposed to the attractive brand value of the Complainant’s mark.
The Domain Name is being used to advertise competitors of the Complainant. This, combined with the fact that the Domain Name is nearly identical to the Complainant’s well-known mark, is a clear indicator of bad faith under paragraph 4(b)(iv) of the Policy in circumstances where the Domain Name is being used for the commercial gain of the Respondent (WIPO Overview 3.0 at section 3.1.4). A respondent cannot disclaim responsibility for programmatically generated PPC content (WIPO Overview 3.0 at section 3.5).
Further, the Panel notes that the initial registrant, per the WhoIs record for the Domain Name, was a privacy service. The Registrar subsequently revealed the underlying registrant to be yet another privacy service. This nesting of privacy services, otherwise known as a “Russian doll” scenario, is considered as an indicator of bad faith, which is appropriate given the totality of the circumstances of this case (WIPO Overview 3.0 at sections 3.6 and 4.4.6).
The Panel has independently established that the Domain Name is for sale on domain marketplace Sedo with a “Buy now” price of USD 2,439 – most likely in excess of the out-of-pocket costs related to the Domain Name. This is further evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy.
Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (section 4.3 of the WIPO Overview 3.0; see also Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171).
The Complainant has satisfied 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 Domain Name, <carvaana.com>, be transferred to the Complainant.
Date: October 28, 2020