DECISION

 

Chewy, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf

Claim Number: FA2402002084352

 

PARTIES

Complainant is Chewy, Inc. ("Complainant"), represented by Brian J. Winterfeldt, District of Columbia, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chewy.us.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 19, 2024; Forum received payment on February 19, 2024.

 

On February 20, 2024, CentralNic confirmed by e-mail to Forum that the <chewy.us.com> domain name is registered by Respondent and Respondent is bound by the CentralNic Dispute Resolution Policy (the "CDRP Policy"). CentralNic verified that mediation was conducted and failed.

 

On February 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2024, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@chewy.us.com. Also on February 23, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 15, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.)  as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Chewy, Inc. ("Complainant" or "Chewy") provides pet supplies and pet wellness-related services through its online retail store, including pet food, treats, supplies, and veterinary pharmaceutical products and services. Respondent's <chewy.us.com> domain name is identical or confusingly similar to Complainant's CHEWY mark in which Complainant has rights. (See e.g. CHEWY, U.S. Reg. 5,028,009, in Class 35, used in commerce since 2016 and registered on August 23, 2016, for "On-line retail store services featuring pet food, pet supplies and pet accessories."). The <chewy.us.com> domain name wholly incorporates the mark and adds the ".US" country code Top-Level Domain ("ccTLD") and the ".COM" Top-Level Domain ("TLD").

 

Respondent does not have right or legitimate interests in the <chewy.us.com> domain name. Respondent is not commonly known by the <chewy.us.com> domain name and is not licensed or authorized to use Complainant's CHEWY trademark. Respondent is not making legitimate non-commercial or fair use of the domain name. Instead, the disputed domain name resolves to a copycat website, titled "Chewy Pet Supplies Online Store" which uses the CHEWY marks without authorization.

 

Respondent registered the <chewy.us.com> domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Chewy, Inc. ("Complainant" or "Chewy"), founded in 2011, provides pet supplies and pet wellness-related services through its online retail store, including pet food, treats, supplies, and veterinary pharmaceutical products and services. Chewy operates over 10,000,000 square feet of fulfillment warehouses and has fulfillment centers in 17 physical locations, corporate offices in five locations, and customer service centers in four locations across the United States. Complainant employs more than 19,000 people and offers over 110,000 products and services from over 3,500 brands. Complainant had net sales of over $10 billion in fiscal year 2020. Chewy was ranked 394 on the Fortune 500 and ranked 26 on Forbes' The Halo 100 for 2022. Complainant provides pet supplies and pet wellness-related services through its <chewy.com> domain name which is used for the primary website of Complainant. Respondent's <chewy.us.com> domain name is identical and confusingly similar to Complainant's CHEWY mark.

 

On April 17, 2022, Respondent registered the <chewy.us.com> through Namecheap. The disputed domain name resolves to a copycat website, titled "Chewy Pet Supplies Online Store" which uses the CHEWY marks without authorization.

 

Respondent registered the <chewy.us.com> domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered or is being used in bad faith.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; See also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the CHEWY marks under Policy ¶ 4(a)(i) through registration with the United States Patent and Trademark Office. See Bandcamp LLC v. Cecilia Alvarez-Heard, FA 2045590 (Forum Jun. 23, 2023) ("It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registration for BANDCAMP, the Panel is satisfied that it has trademark rights.").

 

Respondent's <chewy.us.com> domain name is identical to and confusingly similar to Complaint's mark as the domain name wholly incorporates the CHEWY mark and adds the ".US" country code Top-Level Domain ("ccTLD") and the ".COM" Top-Level Domain ("TLD"). See Williams-Sonoma, Inc. v Redacted for Privacy, FA 2067774 (Forum Nov. 22, 2023) ("For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com", can be disregarded, as can the element, ".us", which reproduces the ccTLD for the United States.); See also, e.g., Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD [whether a gTLD, sTLD or ccTLD] is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

Rights or Legitimate Interests

Respondent does not have rights or legitimate interests in the <chewy.us.com> domain name because Respondent is not licensed or authorized to use Complainant's CHEWY mark and is not commonly known by the disputed domain name. See Foot Locker, Inc. v. Blezin Widmaer, No. FA 113283 (Forum June 17, 2002) (finding registrant had no rights or legitimate interests in domain where "Respondent is not a licensee or authorized agent of Complainant."). Respondent is not commonly known by CHEWY. See Gallup Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). The WhoIs record indicates that the domain was registered via a privacy shield, or the data is otherwise redacted.

 

Respondent has not used, nor made any demonstrable preparations to use, the <chewy.us.com> domain name in connection with a bona fide offering of goods or services or in connection with a non-commercial or fair use. Instead, the disputed domain name resolves to a copycat website, titled "Chewy Pet Supplies Online Store" which uses the CHEWY marks without authorization, including Chewy's CHEWY logo and C Logo, which Respondent uses as its favicon. Respondent's website also names Complainant's founders under the header "Our Origin Story" and incorporates a copyright notice at the bottom of the landing page. Respondent also uses Complainant's proprietary pet product photographs to advertise Respondent's offerings of pet products and related services.

 

Respondent is using the disputed domain name to infringe and cybersquat upon Complainant's rights in its globally famous and well-known CHEWY marks, including in the United States, where Complainant has owned valid, subsisting, and well-known trademark rights and federal trademark registrations since at least 2013, long predating Respondent's registration of the disputed domain name in 2022. Respondent attempts to pass itself off as Complainant by making prominent use of the CHEWY marks and Complainant's proprietary pet product photographs and advertising offerings of competing pet products and related services on Respondent's website. See, e.g., Salvatore Ferragamo S.p.A. v. Gauthier Monica, FA 1810677 (Forum Nov. 4, 2018) ("Respondent imitates the look and feel of what might be Complainant's actual website by prominently displaying Complainant's FERRAGAMO trademark along with photographs of Complainant's footwear and related products. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii).").

 

To further deceive Internet users, Respondent utilizes Complainant's C Logo in blue and white as the favicon for Respondent's website, which is identical to the favicon Complainant uses on Complainant's website. See LEGO Juris A/S v. Contact Privacy Inc. Customer 1246240368 / Nguyen Anh Duy, Case No. D2020-0822 (WIPO May 20, 2020) (finding complainant made out a prima facie case of respondent's lack of rights or legitimate interests in the disputed domain name, noting "Respondent has taken its false association a step further by employing an unauthorized favicon using the LEGO Mark and logotype displayed in the browser address bar when navigating to Respondent's website. (Favicons are small square images usually 16×16 pixels which are used by web browsers to show a graphical representation of the site being visited at the left side of the browser's address bar.)"); See also Chewy, Inc. v. david almarin, Case No. D2022-3808 (WIPO Jul. 28, 2023) ("Complainant's evidence shows the disputed domain name resolves to a "copycat" website used to impersonate Complainant).

 

As the disputed domain name resolves to a copycat website offering competing pet products and services under the CHEWY marks, Respondent is trading on the goodwill associated with the CHEWY marks used in the disputed domain name to draw Internet users to Respondent's website and profit at Complainant's expense. Such use of the disputed domain name does not constitute any legitimate bona fide sale of goods or services or legitimate non-commercial or fair use. 

 

Respondent is trading on the goodwill associated with the CHEWY Mark incorporated in the disputed domain name to attract Internet users to its website and offer pet goods for sale in competition with Complainant. Such use of the disputed domain name does not constitute any legitimate bona fide sale of goods or services or legitimate noncommercial or fair use."); See Woot LLC v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, FA 2026096 (Forum Feb. 7, 2023) ("Respondent uses the at-issue domain name to address a website made to appear as if it were Complainant's own website. Mimicking Complainant's genuine website, Respondent's copy includes Complainant's WOOT logo, references to Complainant's corporate ownership, and images of Complainant's mascot characters… Respondent purports to offer retail services that compete with WOOT branded services and further attempts to deceive third parties into disclosing personal information. Respondent intent to pass itself off as Complainant and use the domain name to facilitate fraud is neither indicative of a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor of a legitimate, noncommercial, or otherwise fair use per Policy ¶ 4(c)(iii).").

 

Registration or Use in Bad Faith

Respondent's registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(iii) of the Policy. Respondent is using the disputed domain name to direct Internet users to a copycat website using Complainant's CHEWY marks and proprietary pet product photographs to advertise competing pet products and related services, thus unfairly trading on the goodwill associated with Complainant's CHEWY marks. Respondent is also passing itself off as Complainant to entice Internet users into providing sensitive user information such as email addresses. Accordingly, Respondent is disrupting Complainant's business by diverting business and prospective business away from Complainant, which shows bad faith under 4(b)(iii) of the Policy.

 

Respondent's registration and use of the <chewy.us.com> domain name also constitutes bad faith under paragraph 4(b)(iv) of the Policy. Respondent has intentionally attempted to pass itself off as Complainant and advertises offerings of competing pet products and related services through its copycat website. Thus, Respondent creates a likelihood of confusion with Complainant's CHEWY marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Accordingly, the disputed domain name was intended to attract Internet users for commercial gain by creating a likelihood of confusion with the CHEWY marks. This activity constitutes bad faith under paragraph 4(b)(iv) of the Policy. See also, e.g., Chewy, Inc. v. david almarin, Case No. D2022-3808 (WIPO Jul. 28, 2023) ("Respondent, having intentionally configured the disputed domain name to enhance confusing similarity to Complainant's CHEWY Mark, is using the disputed domain name to direct Internet users to an imitation website claiming to offer pet goods and services for sale, thus unfairly trading on the goodwill associated with Complainant's CHEWY Marks. Accordingly, Respondent's conduct was undertaken in opposition to Complainant and disruptive to Complainant's business, which prior UDRP panels have found to be evidence of bad faith use under paragraph 4(b)(iii) of the Policy.").

 

Registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can create a presumption of bad faith."). See WIPO Overview 3.0, Section 3.1.4 See, e.g., Chewy, Inc. v. david almarin, Case No. D2022-3808 (WIPO Jul. 28, 2023) (finding bad faith under paragraph 4(b)(iv) of the Policy where Complainant evidenced Respondent's use of a domain name to redirect to an imitation website offering competing goods); Advanced Micro Devices, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, FA 2018765 (Forum Dec. 8, 2022) ("The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's AMD mark for commercial gain by using the identical Domain Name to resolve to a website that passes off as an official website of the Complainant, including by reproducing Complainant's copyrighted material, and offers goods in direct competition with goods offered by Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b) (iv).).

 

Respondent's website also invites Internet users to provide their name, email address, and website to receive a "newsletter" or to leave a comment, showing that Respondent is able to potentially obtain sensitive personal information from users in furtherance of illegal activity, which further shows Respondent's registration and use in bad faith. See Boxhub Inc. v. Mo Abdallah, Case No. D2022-4509 (WIPO Jan. 24, 2023) ("Internet users accessing the website under the disputed domain name were invited to subscribe to a newsletter by providing potentially sensitive personal data, without having the option to further unsubscribe. Such data scraping could conceivably be used for potential illicit online activity and in the present circumstances is a further indication of bad faith.").

 

Respondent registered the disputed domain name in bad faith with actual knowledge of Complainant's rights in the CHEWY marks, having registered the disputed domain name long after Complainant had registered many of the CHEWY marks and used Complainant's logos and proprietary pet product photos to offer competing goods and services. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) ("The domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith."); Walgreen Co. v. Registration Private, Domains By Proxy LLC / Nitish Maheshwari, Case No. D2017-1601 (WIPO Sep. 28, 2017) ("[T]he website to which the disputed domain name resolves shows the Complainant's logo and products of the type associated with it. This demonstrates that the Respondent knew of the Complainant and was using the disputed domain name to exploit the Complainant's trademark in order to sell products to customers who would have assumed that they were dealing with the Complainant.").

 

Complainant's rights in the CHEWY marks are so well established, and its CHEWY brand has achieved a level of recognition and fame such that the Respondent has no colorable argument that he is unaware of this brand. The disputed domain name is only valuable because of its association with the CHEWY brand. See, e.g., Chewy, Inc. v. david almarin, Case No. D2022-3808 (WIPO Jul. 28, 2023) (finding bad faith because "here, it would be implausible to believe that Respondent selected and was using the disputed domain name for any other purpose than to trade on Complainant's trademark rights and reputation" in light of the fame of the CHEWY Mark and circumstances of respondent's use of a confusingly similar domain name for an imitation website); See also Chewy Inc. v. Rostislav Karyi / Ростислав Карый, Case No. DUA2020-0007 (WIPO May 1, 2020) ("[N]oting the Complainant's rights in the CHEWY Marks, that the disputed domain name is identical to the CHEWY Marks, and the manner the disputed domain name is being used, the Respondent has no colorable argument that he is unaware of the CHEWY brand. The Respondent sought to capitalize on that goodwill by drawing Internet users to its website for commercial gain by creating a likelihood of confusion with the CHEWY Marks.").

 

For the reasons described above, the disputed domain name is identical and confusingly similar to Complainant's CHEWY marks, Respondent lacks rights or legitimate interests in the disputed domain name, and the disputed domain name was registered and used in bad faith, in violation of Policy ¶ (4)(a).

 

DECISION

Complainant having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chewy.us.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

__________________________________________________________________

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: April 1, 2024