ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chewy, Inc. v. Name Redacted Case No. D2024-2901 1. The Parties The Complainant is Chewy, Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States. The Respondent is Name Redacted. 1 2. The Domain Name and Registrar The disputed domain name is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2024. On July 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2024, 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 (“New Providence, BS”) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2024, 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 July 22, 2024. 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”). 1The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2024. The Center received email communications from an email address other than the email address provided by the Registrar for the Respondent on August 12 and 22, 2024. The Center appointed Alissia Shchichka as the sole panelist in this matter on August 22, 2024. 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 large online retailer, founded in 2011, with over 10 million square feet of warehouses and 16 fulfillment centers across the United States. The Complainant employs more than 18,000 people and offers around 115,000 products from over 3,500 brands, with net sales of USD 11.15 billion in 2023. The Complainant had over 20 million active customers in 2023 and is listed on the Fortune 500 for 2024. The Complainant has evidenced to be the registered owner of numerous trademarks worldwide relating to its trademarks CHEWY including, but not limited, to the following: - European Union Trademark registration No. 018101754, registered on December 14, 2019, for the word mark CHEWY, in class 35; - United States registration No. 5028009, registered on August 23, 2016, for the word mark CHEWY, in class 35. The Complainant is also the owner of the domain name , registered on April 18, 2004. The aforementioned trademarks and domain name were registered before the disputed domain name, which was registered on February 13, 2024. The disputed domain name currently resolves to a website displaying the Complainant’s trademark, along with the Complainant’s contact details, and offering coupons and promo codes for the sale of pet supply products under the CHEWY trademark. Nothing is known about the Respondent other than the details disclosed by the Registrar, which appear to have been fraudulently adopted from a third party, as discussed further below. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant submits that it has established substantial goodwill in its CHEWY trademark. According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s CHEWY trademark, as it incorporates the entire trademark. The addition of a single character, “s” to the end of the CHEWY trademark, along with the “.shop” Top-Level Domain (“TLD”), does not render the disputed domain name dissimilar to the Complainant’s trademark. Furthermore, the Complainant points out that, according to panels’ prior decisions, the addition of a single character, such as ”s” to an established trademark is a clear example of typosquatting and does not mitigate the finding of confusing similarity.
page 3 The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since (1) the Respondent has registered the disputed domain name after the Complainant’s trademark had established significant goodwill; (2) the Respondent is not commonly known by the disputed domain name; (3) the Respondent has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name; and (4) the Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services. Finally, the Complainant asserts that the Respondent's registration and use of the disputed domain name constitutes bad faith based on the following grounds: (1) the Complainant’s trademarks were registered prior to the registration of the disputed domain name, and the Respondent was aware of these trademarks; (2) the Respondent is causing disruption to the Complainant’s business by disseminating outdated and potentially inaccurate information which does not constitute a bona fide offering of goods or services; and (3) the Respondent is deliberately attracting Internet users for commercial benefit by falsely claiming to offer coupons and promo codes directly from the Complainant, providing a link to the purported Complainant’s “official website” while redirecting them to the Respondent’s site, thereby creating a likelihood of confusion regarding the source, sponsorship, affiliation, or endorsement of the disputed domain name with the Complainant’s CHEWY trademark. The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not respond to the Complainant’s contentions. However, an email was received from an individual sharing the same name as disclosed for the Respondent, but from an email address other than that disclosed by the Registrar for the Respondent. The individual submitted two informal email communications in Russian on August 12 and 22, 2024, the translation of relevant parts is as follows: “Today, August 12, 2024, I received from you a registered letter with notification regarding Case No. B 2024-2901. The letter indicates that a complaint has been filed against me […] However, the notification regarding Case No. D2024-2901 did not specify which domain names are in question. Therefore, I kindly request that you send me a copy of the complaint and a list of the domain names involved in the dispute to this email address: [...]@gmail.com. Additionally, please indicate to which email addresses and when the copies of the complaint and notification were sent.” and “From the claims you have sent, I did not find any explanation as to why you […] concluded that the domain name , supposedly registered on February 13, 2024, using the registrar TLD Registrar Solutions Ltd, has any connection to me. Additionally, I am curious about how you obtained my mailing address, to which you sent a notification letter using the ‘WIPO’ header. Your claim clearly indicates that you have no information about the owner of the disputed domain name . Quote: ‘All the information known to the claimant regarding how to contact the Respondent is as follows: Registrant Name: Not provided Registrant Address: Not provided City: Not provided State/Province: New Providence Postal Code: Not provided Country: United Kingdom Phone: Not provided Fax: Not provided Email: Not provided’ Therefore, I consider your claims against me to be unfounded. I also want to assure you that I have not registered any domain names with any registrar, including TLD Registrar Solutions Ltd, in the past 10 years. I have no connection to the domain name .
page 4 From the documents you provided, I conclude that you have engaged in fraudulent actions against me (a citizen of the Russian Federation) with subsequent extortion of financial penalties. I warn you that if you do not cease these fraudulent actions against me and the misuse of my personal data in your schemes, I will be compelled to report this matter to law enforcement authorities in the Russian Federation, as well as to Interpol and other international law enforcement agencies.“ 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from the Respondent’s failure to submit a substantive response as it considers appropriate. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant
page 5 evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Indeed, the Complainant has confirmed that the Respondent is not affiliated with the Complainant, or otherwise authorized or licensed to use the CHEWY trademarks or to seek registration of any domain name incorporating the trademarks. The Respondent is also not known to be associated with the CHEWY trademarks, and there is no evidence showing that the Respondent has been commonly known by the disputed domain name. WIPO Overview 3.0, section 2.3. The Panel also notes that the composition of the disputed domain name carries a risk of implied affiliation or suggests sponsorship and/or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. Finally, the Panel further observes that the circumstances of the case do not support a finding of rights or legitimate interests, as there is no indication on the website clarifying to Internet users that it is not operated by the Complainant. WIPO Overview 3.0, section 2.5.2. Accordingly, the Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel observes that the Complainant’s CHEWY trademarks registrations substantially predate the Respondent’s registration of the disputed domain name. Additionally, the choice of the “.shop” TLD for the disputed domain name, which is used for a website offering coupons and discounts for products under the Complainant’s mark, along with the incorporation of the Complainant’s trademarks and logo on that website, suggests that the Respondent was clearly aware of the Complainant’s business and trademarks at the time of registering and using the disputed domain name. Moreover, the screen captures of the web pages submitted with the Complaint show that the Respondent’s website neither discloses the Respondent’s identity or contact details nor accurately indicates that there is no relationship between the Respondent and the Complainant. Instead, the content misleads the public into believing that the website is owned by, connected to, or endorsed by the Complainant. Specifically, the top of the homepage of the website linked to the disputed domain name references the website “www.chevvy.com”, which is highly similar to the Complainant’s official site, “www.chewy.com”, and includes a section titled “About Chevy” with the Complainant’s address and a link purportedly to the “Chewy official site”, which, in reality, redirects to the same page of the disputed domain name. Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the coupons purported
page 6 to be offered by the Respondent, constitutes use of the disputed domain name in bad faith for the purposes of the Policy. WIPO Overview 3.0, section 3.1.4. Furthermore, Panels have held that the use of a domain name for illegal activity here, impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. In this context, the Panel also attaches significance to the fact that the Center did not receive any substantive response from the Respondent. The individual associated with the email address that wrote to the Center in connection with its receipt of the Center’s written communication clearly expressed no recognition of the disputed domain name nor of having registered any domain name with the Registrar. Accordingly, it seems likely that the Respondent fraudulently adopted the information of a third party when registering the disputed domain name, which the Respondent then used for its fraudulent scheme to profit from the alleged sale of coupons to the Complainant’s goods, all of which supports a finding of bad faith registration and use in this proceeding. The Panel finds that, in the circumstances of this case, the Respondent’s registration and use of the disputed domain name constitute bad faith. The Panel finds that the Complainant has established 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 be transferred to the Complainant. /Alissia Shchichka/ Alissia Shchichka Sole Panelist Date: September 6, 2024
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