Carvana, LLC v Domains By Proxy, LLC. / Fundacion Comercio Electronico

WIPO Case No. D2022-1099

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carvana, LLC v. Domains By Proxy, LLC. / Fundacion Comercio Electronico,
Carolina Rodrigues

Case No. D2022-1099

1. The Parties

The Complainant is Carvana, LLC, United States of America, represented by Bryan Cave Leighton Paisner

LLP, United States of America.

The Respondent is Domains By Proxy, LLC., United States of America/ Fundacion Comercio Electronico,

Carolina Rodrigues, Panama.

2. The Domain Name and Registrar

The disputed domain name <carvanautos.com> (“Domain Name”) 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 March 30, 2022.

On March 31, 2022, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the Domain Name. On April1, 2022, 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 April 4, 2022 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 April 5, 2022.

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 April 6, 2022. In accordance with the Rules, paragraph 5,

the due date for Response was April 26, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on May 10, 2022.

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The Center appointed Nicholas Smith as the sole panelist in this matter on May 13, 2022. 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 is a United States company that operates an e-commerce platform for buying and selling

used cars from the website “ (the “Complainant’s Website”) and under the trade mark

CARVANA (the “CARVANA Mark”). The Complainant launched its service in 2013, currently operates in 311

markets and in 2021 sold more than 425,000 vehicles to retail customers. The Complainant’s Website

averages more than 17.8 million unique visitors per month.

The Complainant is the owner of trademark registrations for the CARVANA Mark in the United States,

including registration number 4,328,785, registered on April 30, 2013 for services in classes 35 and 36.

The Domain Name <carvanautos.com> was registered on January 26, 2022. The Domain Name is used to

divert Internet users to third-party commercial automobile dealership websites that directly compete with the

Complainant, for which the Respondent presumably receives some form of compensation. The Respondent

has been the named and unsuccessful respondent in over 80 previous proceedings with the Center,

including Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues,

Fundacion Comercio Electronico, WIPO Case No. D2020-0018; Serena & Lily, Inc. v. Registration Private,

Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-

0568; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC /

Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3045; LEGO Juris A/S v.

Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO

Case No. D2019-2834; Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina

Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991; Patagonia, Inc. v. Registration

Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No.

D2019-1409; Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues,

Fundacion Comercio Electronico, WIPO Case No. D2019-1109; Société Air France v. Registration Private,

Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, WIPO Case No. D2019-0578; and

Ford Motor Company v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2787.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i)        that the Domain Name is identical or confusingly similar to the Complainant’s CARVANA Mark;

(ii)       that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii)      that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the CARVANA Mark, having registered and used the CARVANA Mark in

the United States. The Domain Name is confusingly similar to the CARVANA Mark since it wholly

incorporates the CARVANA Mark and adds the descriptive word “autos”, noting that the third letter “a” in the

Domain Name is shared between the CARVANA Mark and the word “autos”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The

Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization

from the Complainant to register the Domain Name. The Respondent is not making a legitimate

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noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to

resolve to third party websites that offer services in direct competition with the Complainant, which

capitalises on the Complainant’s reputation in the CARVANA Mark to disrupt the Complainant’s business

and deceive its customers.

The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to

third party websites in direct competition with the Complainant, the Respondent is using the Domain Name to

divert Internet users searching for the Complainant for commercial gain. Such conduct amounts to

registration and use of the Domain Name in bad faith. In addition the Respondent has engaged in a pattern

of registering domain names corresponding to famous trademarks in order to prevent the trademark owners

from reflecting their marks in corresponding domain names

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must

be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the CARVANA Mark, having registrations for the CARVANA Mark as a

trademark in the United States. The Domain Name wholly incorporates the CARVANA Mark along with the

additional element “utos” which when combined with the CARVANA Mark would read as the word “autos”

(and the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any

domain name). Other UDRP panels have repeatedly held that where the relevant trademark is recognizable

within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,

meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element; see

section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”).

The Panel finds that the Domain Name is confusingly similar to the Complainant’s CARVANA Mark.

Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks

rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of

production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or

legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved

based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the

domain name for purposes of Paragraph 4(a)(ii):

(i)        before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain

name or a name corresponding to the domain name in connection with a bona fide offering of goods or

services; or

(ii)       you (as an individual, business, or other organization) have been commonly known by the domain

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name, even if you have acquired no trademark or service mark rights; or

(iii)      you are making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized

by the Complainant to register or use the Domain Name or to seek the registration of any domain name

incorporating the CARVANA Mark or a mark similar to the CARVANA Mark. There is no evidence that the

Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the

Respondent has used or made demonstrable preparations to use the Domain Name in connection with a

legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain

Name to resolve to third party competitors of the Complainant (for which the Respondent is likely to receive

revenue) does not amount to use for a bona fide offering of goods and services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests

in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has

rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has

no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if

found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad

faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily

for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant

who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable

consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or

service mark from reflecting the mark in a corresponding domain name, provided that the respondent has

engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,

Internet users to its 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 the respondent’s website or

location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).

The WIPO Overview 3.0 records, in response to the question “3.1.2 What constitutes a pattern of conduct of

preventing a trademark holder from reflecting its mark in a domain name?” that:

“UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few

as two instances of abusive domain name registration. This may include a scenario where a respondent, on

separate occasions, has registered trademark-abusive domain names, even where directed at the same

brand owner. A pattern of abuse has also been found where the respondent registers, simultaneously or

otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand

owners…”

The Panel finds that the Respondent has engaged in pattern of registering domain names closely

corresponding with the trademarks of commercial enterprises (in the cases referred to in the Factual

Background) for commercial gain and to prevent the owner of the trade mark or service mark from reflecting

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the mark in a corresponding domain name. The Respondent has been the unsuccessful party in over 80

cases under the Policy before the Center. On the basis of this information, the reputation of the Complainant

and its CARVANA Mark as well as the lack of any explanation by the Respondent of its registration and use

of the Domain Name, the Panel is satisfied that the Domain Name was registered and is presently used in

order to prevent the Complainant, being the owner of the CARVANA Mark, from reflecting its mark in a

corresponding domain name and that the Respondent has engaged in a pattern of such conduct. The

Policy, paragraph 4(b)(ii), provides that this circumstance is evidence of registration and use of a domain

name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith

under 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 Domain Name, <carvanautos.com> be transferred to the Complainant.

/Nicholas Smith/

Nicholas Smith

Sole Panelist

Date: May 20, 2022