WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carvana, LLC v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-0275

1. The Parties

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

Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <carvanaz.com> is registered with Media Elite Holdings Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 9, 2021.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 12, 2021. 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

Complainant is CARVANA, LLC, a leading e-commerce platform for buying and selling used cars. Complainant promotes online vehicle dealership and financing services in the United States under the CARVANA trademarks through its official website <carvana.com>, which hosts Complainant’s e-commerce platform. Complainant’s website receives more than 5 million visitors each month.

Complainant delivers vehicles throughout the United States and also operates 26 (twenty-six) vending machines under the trademark CARVANA, located in the major cities. Complainant has grown rapidly since launching in January 2013 and currently operates in more than 261 markets, covering more than 73.2 per cent of the United States population.

Furthermore, Complainant sold more than 175,000 vehicles to retail customers only in 2019, in a way that its “used vehicle sales revenue” exceeded USD 3 billions.

In light of the above, considering the valuable goodwill and reputation incorporated by CARVANA, Complainant has filed several trademarks registrations in the United States in order to protect its investments and rights over the automobile services that the company provides, for example:

Trademark

U.S. Registration No.

Application Date

Registration Date

Status

International Class

CARVANA
(Word Mark)

4,328,785

April 11, 2011

April 30, 2013

Active

35; 36

CARVANACARE
(Word Mark)

4,971,997

May 15, 2015

June 7, 2016

Active

36

CARVANA
(Word Mark)

5,022,315

January 7, 2016

August 16, 2016

Active

39

CARVANA

(logo)

6,037,292

November 13, 2019

April 21, 2020

Active

35; 36; 39

It is also noted that Complainant is the owner of CARVANA trademark registration since April 30, 2013, and of its official domain name <carvana.com> since October 18, 2003, while the disputed domain name <carvanaz.com> was registered by Respondent on December 3, 2020 – after the registration of Complainant’s trademarks and domain name.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name <carvanaz.com> is confusing similar to its registered trademarks CARVANA. This is because the disputed domain name incorporates the sign CARVANA in its entirety, with the sole addition of the letter “z” – which does not provide any distinctiveness to the disputed domain name.

Thus, Complainant notices that the word “carvanaz” incorporated by the disputed domain name is an intentional misspelling of its trademark CARVANA, which constitutes typosquatting, insufficient to materially distinguish a domain name from another’s trademark and avoid consumer confusion.

According to Complainant, the addition of the letter “z”, when alongside with the letter “a” composing “AZ”, can also refer to the state where Carvana’s headquarters is located (i.e.,Arizona). In this regard, Complainant affirms that the addition of a geographic location to Complaint’s trademark CARVANA, by the state abbreviation “AZ”, enhances the likelihood of confusion, especially because Carvana, LLC is registered and headquartered in Arizona.

Considering this scenario, Complainant believes that Internet users can be misdirected to the website by making a typographical error on Complainant’s trademark CARVANA, fulfilling paragraph 4(a)(i) and (iii) of the Policy.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark CARVANA, nor any permission to register the trademark as a domain name.

Complainant alleges that the disputed domain name <carvanaz.com> resolves to a parked page displaying links for Complainant’s competitors’ websites offering automobile services, which means that there is no evidence of legitimate use of the disputed domain name for any activity or business. Differently, Respondent would be only exploiting Complainant’s fame and goodwill to attract Internet users to its website.

In addition, Complainant affirms that the trademark CARVANA is not a descriptive term in which Respondent might have an interest. On the contrary, (i) CARVANA is highly distinctive since it is an invented English word with no particular meaning, (ii) Respondent has no prior right to the trademark CARVANA and (iii) Respondent is not even generally known by the disputed domain name. Considering those facts, Complainant notes that Respondent would not have chosen such domain name unless it was seeking to create an impression of association with Complainant.

Complainant contends that the facts described above would indicate that Respondent cannot claim any rights or legitimate interests over the sign CARVANA, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

Moreover, Complainant submits that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, nor to make a legitimate noncommercial or fair use of the disputed domain name. Indeed, Respondent would be showing an illegal and improper purpose of trading upon Complainant’s goodwill to confuse, mislead, deceive and divert customers to wrongly access the disputed domain name.

In this regard, Complainant claims that the disputed domain name was plainly designed to divert Complainant’s potential consumers toward Respondent’s commercial website, which displays links for Complainant’s competitors offering automobile services, showing Respondent’s bad faith in the registration and use of the disputed domain name. Thus, Complainant sustains that paragraphs 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules would have been fulfilled too.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy by showing evidence that it owns several trademark registrations for the sign CARVANA, which predate the registration of the disputed domain name by Respondent.

In addition, the Panel notes that the trademark CARVANA is contained in its entirety in the disputed domain name, with the sole difference that the letter “z” was added in the end. As per WIPO Overview 3.0: “1.9. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” See also WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

Thus, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, 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.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <carvanaz.com>.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances indicates that: “(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor”; and “(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.”

The Panel considers that it is highly unlikely that Respondent had no knowledge of Complainant’s rights to CARVANA trademarks at the time of registration of the disputed domain name, especially because (i) Complainant’s trademark were first registered in 2013, while the disputed domain name <carvanaz.com> was registered by Respondent only in 2020; (ii) Complainant’s trademark CARVANA is considerably famous in the automobile branch, in which Respondent displays links of Complainant’s competitors and (iii) the term “carvana” is highly distinctive and it not used in any other circumstance but to make reference to Complainant’s business.

Furthermore, Complainant’s trademark CARVANA is contained in its entirety in the disputed domain name, with the sole difference that the letter “z” was added in the end. The choice of the letter “z” was clearly made because in the QWERTY-type keyboards the letter “z” is immediately below the letter “a”, which is the last letter of trademark CARVANA. Such addition is a clear case of typosquatting, wherein Respondent has purposefully misspelled the trademark CARVANA and it is a practice considered be an evidence of bad faith (see WIPO Overview 3.0, sections 3.1.4 and 3.2.1). Alternatively, for the event it is meant to invoke Arizona where Complainant is headquartered, this would be bad faith targeting and the result is the same.

Lastly, the Panel finds that the disputed domain name is more likely than not to disrupt Complainant’s business. The page hosted by the disputed domain name is a Pay-Per-Click (“PPC”) page, that can be summarized as a bridge to several other pages owned by companies in the automobile industry competing with Complainant. As per section 2.9 of WIPO Overview 3.0 “[…[ panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. Obviously, what is intended by Respondent with such page is to take advantage of Complainant’s reputation and goodwill so as to attract Complainant’s customers and divert them to its competitors’ website, causing a direct loss to its business. Additionally, Respondent generates traffic and sales commissions for its own commercial benefit.

Given all the above mentioned, the evidence shows that Respondent was more likely than not deliberately trying to create confusion and mislead Complainant’s customers for commercial gain in an unfair way. The fact that Respondent did not present any response to the Complaint reinforces the conclusion that Respondent acted in bad faith.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iii) and (iv) of the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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, <carvanaz.com> be transferred to Complainant Carvana, LLC.

Gabriel F. Leonardos
Sole Panelist
Date: March 26, 2021