Decision for dispute CAC-UDRP-107823

The Panel is unaware of any other pending or decided legal proceedings in respect of the domain name <chewyspetstore.com> ('the disputed domain name').

The Complainant holds an array of trade mark registrations concerning the trade mark CHEWY across various jurisdictions, including United States, Canada, Europe, and Australia. Noteworthy registrations include:

• US trade mark registration no. 5028009, filed on 15 April 2015, for the mark CHEWY, in class 35 of the Nice Classification;

• EU trade mark registration no. 018513701, filed on 14 July 2021, for the mark CHEWY, in class 9 of the Nice Classification;

• Australian trade mark registration no. 2060121, filed on 2 January 2020, for the mark CHEWY, in class 35 of the Nice Classification; and

• Canadian trade mark registration no. 1045601, filed on 10 April 2017, for the mark CHEWY, in class 35 of the Nice Classification.

(Referred to as 'the Complainant's trade mark' or 'the trade mark CHEWY').

The disputed domain name <chewyspetstore.com> was registered on 7 June 2023. It currently resolves to an active website, the details of which are discussed in the course of the Panel's decision (for present purposes, 'the Respondent's website').

A. Complainant's Factual Assertions

The Complainant's statements of fact can be summarised as follows:

The Complainant, Chewy, Inc., operates as a prominent online retailer specialising in pet supplies, encompassing pet food, accessories, and wellness-related services. Established in 2011, the Complainant has rapidly ascended within the commercial sector, attending a rank of #362 on the Fortune 500 list by 2023, alongside nearly USD 12 billion in net sales.

B. Respondent's Factual Assertions

The Respondent has failed to submit a response in this UDRP proceeding; consequently, the Complainant's factual assertions remain uncontested.

A. Complainant's Submissions

The Complainant's contentions can be summarised as follows:

A.1 The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights

The Complainant asserts that the disputed domain name closely mirrors the trade mark CHEWY by incorporating the terms 'pet' and 'store', which are merely descriptive terms and do not diminish the similarity with the Complainant's trade mark, nor does the standard registration requirement Top-Level Domain (the 'TLD') <.com>.

The Complainant therefore argues that the disputed domain name is unequivocally confusingly similar to the trade mark CHEWY.

A.2 The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant posits that the Respondent lacks any rightful claim to the disputed domain name. The Complainant has not authorised any use of its trade marks, and the registration of the disputed domain name was undertaken well after the Complainant had established significant goodwill associated with the trade mark CHEWY. The Respondent's actions are devoid of legitimate interest, primarily seeking to infringe upon the Complainant's rights. No evidence supports the claim of common usage or legitimate interest. In addition, the Respondent cannot make any claim to be a reseller with a right or legitimate interest in the disputed domain name, for the Respondent does not accurately disclose the Respondent's lack of a relationship or affiliation with the trademark owner, namely, the Complainant. Finally, the Respondent utilises the disputed domain name to mislead Internet users into believing they are engaging with the Complainant's official website, thus infringing upon the Complainant's reputation and goodwill.

A.3 The Respondent registered and is using the disputed domain name in bad faith

The Complainant contends that the disputed domain name has been registered and used in bad faith. The Respondent's actions are indicative of an intent to disrupt the Complainant's business operations and derive commercial gain through misleading practices (circumstances 4(b)(iii) and 4(b)(iv) of the UDRP Policy).

The Respondent's website engages in an imitation of CHEWY's offerings, misleadingly presenting itself as a legitimate CHEWY outlet while unlawfully collecting personal information from Internet users. The deliberate confusion engendered by the Respondent's use of the disputed domain name constitutes an exploitation of the Complainant's established reputation. This aligns with the principles set out in previous UDRP decisions, which have firmly established that such actions denote bad faith.

A.4 Relief sought

The Complainant requests the transfer of the disputed domain name.

B. Respondent's Submissions

The Respondent has not submitted a Response in this UDRP proceeding; hence, the Complainant's submissions are uncontested.

The Complainant has satisfactorily demonstrated that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP Policy).

The Complainant has failed to establish a prima facie case regarding the Respondent's lack of rights or legitimate interests in the disputed domain name (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).

The Panel refrains from ruling on this UDRP Policy ground as it is rendered immaterial due to the findings outlined below.

The Panel confirms that all procedural requirements under the UDRP have been duly met, with no grounds preventing a decision from being issued.

A. Applicable Legal Framework

Pursuant to Rule 15 of the UDRP Rules, the Panel shall adjudicate a complaint based on the statements and documents submitted, in accordance with the UDRP Policy, the UDRP Rules, and any applicable rules and principles of law.  

Paragraph 4(a) of the UDRP Policy delineates the cumulative grounds the Complainant must establish to succeed:

i. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

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.

These three elements shall be collectively referred to as 'the requirements of the UDRP Policy'. The standard of evidence in UDRP proceedings in the balance of probabilities, and the Panel will assess each requirement in turn.

B. Identical or Confusingly Similar

The test under the first UDRP Policy ground necessitates a juxtaposition of the disputed domain name against the Complainant's trade mark, constituting a relatively straightforward assessment.

To succeed, the Complainant must demonstrate its rights in a trade mark or service mark, after which the Panel will assess whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.

The Panel finds that the Complainant has established trade mark rights in 'CHEWY' since at least 2015, with compelling and well-documented evidence supporting these rights.

The disputed domain name is <chewyspetstore.com>, which comprises the term 'chewy' with an additional 's', along with the descriptive terms 'pet' and 'store', and the generic TLD <.com>.

A straightforward comparison reveals significant overlap; both 'chewy' and 'chewys' exhibit a notable resemblance. The terms 'pet' and 'store' amplify the likelihood of confusion due to their descriptive nature and direct relevance to the Complainant's business. Furthermore, TLDs (in this case, <.com>) are typically disregarded by UDRP panels under this ground as they do not contribute to the distinctiveness of the domain name.

Consequently, the Panel concludes that the Complainant has satisfied the first requirement of the UDRP Policy.

C. Rights or Legitimate Interests

The second UDRP Policy ground posits that the Respondent must show that it possesses rights or legitimate interests in the disputed domain name. The burden of proof lies with the Complainant to refute such claims.

Paragraph 4(c) of the UDRP Policy delineates non-exhaustive criteria by which the Respondent can evidence its rights or legitimate interests in the disputed domain name, including:

(i) before any notice of this UDRP proceeding, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

In UDRP proceedings, should a complainant establish a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to refute such a case.

The Respondent has not submitted a Response in this UDRP proceeding. Nevertheless, the Complainant has provided a screenshot of the Respondent's website, which the Panel has supplemented with public record research.

A salient aspect of this UDRP Policy ground is the determination of whether the Respondent's activities can be classified as bona fide.

The Respondent's website showcases products for both dogs and cats, comprising a catalogue of 32 products ranging from a waterproof jacket for dogs to pet toys and pet beds. The Panel notes that the Respondent's website layout has remained consistent since at least 31 October 2023 (as per a Wayback machine research conducted by the Panel), which is around the time the disputed domain name was registered (7 June 2023). Therefore, it appears that before any notice of this UDRP proceeding, the Respondent was already using the disputed domain name in the manner in which it is used in the present day.

Moreover, in respect of the Respondent's website, there is no mention of the Complainant's products or branding, and the 'about us' section conveys a narrative independent of the Complainant's. There is no obvious evidence on the record to indicate that the Respondent is targeting the Complainant in its use of the disputed domain name. In particular, despite the parties operating in an overlapping field, it is observed in the Panel's opinion that the term 'chewy' is arguably of low distinctive character in respect of the pet industry, given the meaning of the word. This further undermines the Complainant's position and raises questions regarding any presumption of bad faith or intent to deceive. The Panel also notes that on the Respondent's website, the Respondent gives an explanation for the choice of the term 'chewy', being 'an incredible 8-year-old rescue cat whose journey from being abandoned to happiness has inspired us all'.

Therefore, from the evidence available on the case file and on the public record, on a prima facie basis, the Respondent's business appears legitimate. The Panel concludes that the Respondent does have rights and legitimate interests in the disputed domain name because before any notice of this UDRP proceeding, the Respondent's use of the disputed domain name appears to have been in connection with a bona fide offering of goods and services.

Considering these factors, the Panel finds that the Complainant has not established a prima facie case regarding the Respondent's lack of rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the UDRP Policy.

D. Registered and Used in Bad Faith

In the light of its conclusions regarding the second element of the UDRP Policy, the Panel deems it unnecessary to reach a determination under the third requirement of the UDRP Policy in this case.

F. Decision

For the foregoing reasons, the Complaint is denied.