Carvana, LLC v Global Realtor

WIPO Case No. D2022-0498

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carvana, LLC v. Global Realtor

Case No. D2022-0498

1. The Parties

Complainant is Carvana, LLC, United States of America (“United States” or “U.S.”), represented by Bryan

Cave Leighton Paisner LLP, United States.

Respondent is Global Realtor, United States.

2. The Domain Name and Registrar

The disputed domain name <carvanacarvana.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 February 13, 2022. On February 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2022, 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 Complainant on February 16, 2022, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 18, 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 Respondent of the Complaint, and the proceedings commenced on February 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2022.

The Center appointed Scott R. Austin as the sole panelist in this matter on March 17, 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.

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4. Factual Background

The following facts appear from the Complaint, as amended, and its Annexes.

Complainant is a Fortune 500 company organized under the laws of the State of Arizona with its principal
place of business in Tempe, Arizona. It provides online vehicle dealership services and online vehicle
financing services throughout the U.S. under its trademark consisting of the invented term “carvana” (the
“CARVANA Mark”). Complainant delivers vehicles throughout the U.S., operating more than 20 CARVANA
Vending Machines located in major U.S. cities. Complainant has grown rapidly since launching in January

2013 and currently operates in more than 265 markets, covering more than 73.7% of the U.S. population.

Complainant has secured ownership of a number of trademark registrations for the CARVANA Mark in the
United States for its services, including but not limited to the following:

1.        CARVANA (U.S. Registration No. 4,328,785), 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), registered on June 7, 2016, for “extended

warranty services, namely service contracts; Providing extended warranties on automobiles,” in International
Class 36; and

3. CARVANA (U.S. Registration No. 5,022,315), registered on August 16, 2016, for “shipping, pickup, and delivery services for automobiles,” in International Class 39.

Since the founding of its business in 2013, Complainant has provided its services as an e-commerce platform for buying and selling used cars through its primary website accessed through its official domain name <carvana.com>, (the “CARVANA Mark Official Website”). The CARVANA Mark Official Website which hosts Complainant’s e-commerce platform averages more than 8.5 million unique visitors each month.

The disputed domain name <carvanacarvana.com> was registered on October 16, 2021, and as of the filing of the Complaint resolved to Respondent’s parked website displaying pages with pay-per-click (“PPC”) links used to generate revenue to Respondent by diverting users to the websites of associated third parties.

5. Parties’ Contentions
A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

There are no exceptional circumstances within paragraph 5(f) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To determine which party prevails, the Panel must decide whether Complainant has demonstrated that all the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii) 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 Panel will address each of these required elements in turn.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or
“preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it
is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite
rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1.
Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and
subsisting trademark registrations for the CARVANA Mark. See Advance Magazine Publishers Inc., Les
Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See, WIPO Overview 3.0, section 1.7.

The Panel finds here that the disputed domain name incorporates Complainant’s registered CARVANA Mark in its entirety, not once but twice, and is clearly identical in each case.

Considering that prior UDRP panels have found confusing similarity even with the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks recognizable within a disputed domain name, identically duplicating the registered mark of Complainant to form a disputed domain name clearly meets the confusing similarity standard. See, e.g. DPDgroup International Services GmbH & Co. KG

v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-3141; Carvana, LLC v.
Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-1533 (transferring

<carvanaautofinance.com> to Complainant).

Finally, prior UDRP panels have found that the applicable Top-Level Domain (“TLD”) in a domain name (e.g.,
“.com”, “.club”, “.co”) is viewed as a standard registration requirement and as such is disregarded under the
first element’s confusing similarity test. Accordingly, the TLD “.com” does not avoid a finding of confusing

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similarity. See, WIPO Overview 3.0, section 1.11; see also Research in Motion Limited v Thamer Ahmed
Alfarshooti, WIPO Case No. D2012-1146.

Complainant’s CARVANA Mark is readily recognizable as duplicated in its entirety to create the disputed domain name and for these reasons the Panel finds the disputed domain name confusingly similar to the CARVANA Mark in which Complainant has rights, thus satisfying the first element of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, the complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Mastercard International Incorporated v. MasterCard Brasil, WIPO Case No. D2009-1691. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that Respondent is not in any way associated with Complainant and has never sought nor received authorization or a license to use Complainant’s CARVANA Mark in any way or manner.

Second, according to the record submitted in this case, Respondent is not commonly known by the disputed domain name. Complainant has submitted evidence showing the registrant of the disputed domain name in the WhoIs record made available through the concerned Registrar in these proceedings is “Global Realtor”, a company apparently located in the United States, where Complainant is located, and whose name bears no resemblance to the disputed domain name. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been

commonly known by the disputed domain name. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, this Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Complainant contends that, because the disputed domain name presents repeated identical versions of Complainant’s CARVANA Mark, Respondent has registered and continues to use the disputed domain name for the illegal and improper purpose of trading upon Complainant’s goodwill to confuse, mislead, deceive and divert customers to Respondent’s site used for parked pages to generate revenue for Respondent’s commercial gain.

Prior UDRP panels have held that the use of a complainant’s mark to redirect users (e.g., vis-à-vis the PPC links exhibited on the disputed domain name redirecting users to third-party commercial sites) would not support a claim to rights or legitimate interests. See WIPO Overview 3.0, section 2.5.3. Moreover, in the instance of this proceeding, the links resolve Internet users to services in direct competition with Complainant and in one instance explicitly refers to the CARVANA mark on the advertised link itself, illustrating the intent of Respondent to use the disputed domain name to capitalize on the reputation and goodwill associated with Complainant’s CARVANA Mark.

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In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name when incorporating the CARVANA Mark to confuse consumers and direct them to Respondent’s website for its commercial gain. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel concludes, therefore, that Complainant has established, by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the disputed domain name and Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that its CARVANA Mark is distinctive because it is based on an invented term, and well known in its industry in the United States based on its extensive advertising and marketing. Prior UDRP panels have found the CARVANA Mark to be “a distinctive, coined term that is heavily advertised and well-known”. Carvana, LLC v. Registration Private, Domains By Proxy, LLC / Cline Davis, WIPO Case No. D2020-0859; see also Carvana, LLC v. Domain Administrator, Fundacion Privacy Services Ltd, supra (finding the CARVANA Mark as “well-known in the United States” and of “well-known character”).

Complainant also contends that, because Respondent has registered a disputed domain name that is confusingly similar to Complainant’s well-known CARVANA Mark, incorporating the identical mark twice in its entirety, it is implausible to believe that Respondent was not aware of Complainant’s CARVANA Mark when it registered the disputed domain name. This is especially true where Complainant’s well-known CARVANA Mark has been used for almost ten years prior to Respondent’s registration of the disputed domain name and the CARVANA Mark is widely recognized in the United States, where Respondent is apparently located.

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (even domain names incorporating the mark plus a descriptive term) to a well-known trademark by an unaffiliated entity can, by itself, create a presumption of bad faith, which is certainly borne out here given the status of Complainant’s well-known mark. See, WIPO Overview 3.0, section 3.1.4.; see also, Allianz SE v. Well Domains are either owned by us or Client Managed, WIPO Case No. D2008-0535.

Finally, as noted in Section B above, Complainant contends that the disputed domain name is registered and used in bad faith because the CARVANA Mark is an invented English word, and as such, third parties would not legitimately choose this name unless seeking to create a false association with Complainant to confuse

and mislead consumers as Respondent has done here, in furtherance of redirecting them to parked pages
with PPC links to third-party commercial websites generating revenues to Respondent for its commercial
gain in violation of paragraph 4(b)(iv) of the Policy. See Carvana, LLC v. Domain Administrator, Fundacion
Privacy Services LTD, supra; see also Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No.
D2005-0644.

Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant has met its burden under the third element 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 <carvanacarvana.com> be transferred to Complainant.

/Scott R. Austin/
Scott R. Austin
Sole Panelist
Date: March 31, 2022