Decision for dispute CAC-UDRP-107808

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant holds numerous trademark registrations for the FRISCO mark and related stylized versions of the FRISCO mark (the “FRISCO Marks”) in the U.S. and China, among other jurisdictions. Its trademark registrations for the FRISCO Marks include the following:

1. U.S. trademark registration No. 6,096,690 for FRISCO, registered on July 7, 2020;
2. U.S. trademark registration No. 5,443,894 for FRISCO (stylized), registered on April 10, 2018;
3. U.S. trademark registration No. 5,676,722 for FRISCO, registered on February 12, 2019;
4. China trademark registration No. 67123649 for FRISCO BY CHEWY, registered on April 21, 2023;
5. China trademark registration No. 74062508.78 for FRISCO BY CHEWY, registered on April 21, 2023; and
6. China trademark registration No. 72252429 for FRISCO BY CHEWY (stylized), registered on March 7, 2024.

The Complainant was founded in 2011 and operates one of the largest online retail stores providing pet supplies and pet wellness-related services through its online retail store using its <chewy.com> domain name. In 2023, the Complainant was ranked #362 in the Fortune 500 list of the world's most important companies. In 2024, the Complainant was added to the S&P MidCap 500 list of most valuable midcap stocks. In 2024, the Complainant earned almost USD12 billion in net sales.

The Complainant’s primary website at https://www.chewy.com makes substantial use of the CHEWY trade mark. The Complainant also provides pet supplies and pet wellness-related services via its website that includes and extensively features its house brands such as the FRISCO line of products. The Complainant’s website prominently markets, sells and distributes FRISCO-branded pet products directly to consumers.  

The FRISCO Marks have been used extensively in connection with the Complainant’s online retail pet goods store since 2016.

The Respondent is Zhang Guocun of Sichhuan, Cangxi County, China.

The disputed domain names registered by the Respondent are: <friscopetdogs.com> and <friscopetcats.com>, both registered on March 29, 2024.

At the time of filing the Complaint, the disputed domain names resolved to websites which the Complainant asserts are imitative in nature, offering pet-related products and services in a manner that misleadingly suggests affiliation with the Complainant. The Respondent’s websites prominently use the FRISCO brand and logo, and display product offerings that mimic the CHEWY brand structure and platform.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns registered trademark rights in the U.S. and China (where the Respondent is based) in the mark FRISCO.

The disputed domain names contain the entirety of the Complainants’ FRISCO trade mark with the addition of various suffixes: “pet”, “dogs“, “pet” and “cats”. The entirety of the Complainant’ FRISCO trade mark is incorporated and recognizable within the disputed domain names. The addition of the said descriptive suffixes does not prevent a finding of confusing similarity but in fact adds to the confusion in view of the line of the Complainant’s line of business. See sections 1.7 and 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to the FRISCO trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Complainant provided evidence that it owns trademark rights in the FRISCO Marks, as well as goodwill in the business associated with the FRISCO brand of pet food, well before the date that the disputed domain names were registered. The Respondent is not affiliated with the Complainant and was not licensed or otherwise authorized by the Complainant to use the Complainant’s FRISCO Marks or to use it in a domain name.

The Panel agrees that the Respondent’s mimicking of the Complainant’s website, which involves blatant infringing use of the FRISCO Marks, does not constitute a legitimate noncommercial or fair use of the disputed domain names.

The Respondent did not submit any Response and did not provide any explanation or evidence to show that he has rights or legitimate interests in the disputed domain names which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)).

The circumstances in this case indicate that the Respondent’s intent in registering the disputed domain names was to profit from or otherwise exploit the Complainant’s FRISCO Marks and reputation therein. It is obvious in this case that the Respondent knew of the Complainant and of its FRISCO Marks and specifically targeted it for bad faith use purposes. The deliberate selection of the combinations of domain names incorporating the distinctive word “FRISCO” and the references to “pets”, “dogs” and “cats”, as well as the mimicking of the Complainant’ official website are indicators of bad faith registration and use by the Respondent.

The Respondent’s intention is described in paragraph 4(b)(iv) of the Policy, which is to “attract, for commercial gain, Internet users to [the Respondent’s] 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 [its] web site or location or of a product or service on [its] website or location”.

The Panel therefore concludes that the disputed domain names were registered and used in bad faith.