Decision for dispute CAC-UDRP-107898

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

According to the evidence submitted by Complainant, Complainant is the owner of the Trademark AMERICAN JOURNEY registered with the United States Patent and Trademark Office, registration number 5281428 and registration date 5 September 2017.

According to the information provided the disputed domain name <americanjourneyshop.com> was registered on 4 May 2024.  

According to the information and evidence provided by Complainant the disputed domain name resolves to an online store which markets AMERICAN JOURNEY-branded pet products directly to consumers. 

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

According to the evidence submitted by Complainant, Complainant operates a large online retail store. Complainant provides pet supplies and pet wellness-related services through its online retail store, including pet food, treats and supplies. In 2024, Complainant was added to the Standard & Poors MidCap 500 list of most valuable midcap stocks and in that year, Complainant earned almost USD 12 billion in net sales. Complainant also provides pet supplies and pet wellness-related services through its <chewy.com> domain name that includes and extensively features its house brands, including the AMERICAN JOURNEY line of products.

Complainant submits that the disputed domain name is confusingly similar to Complainant's AMERICAN JOURNEY trademark. The disputed domain name fully incorporates Complainant’s AMERICAN JOURNEY mark, adding only the generic term “shop”.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. Furthermore, the website to which the domain resolves uses Complainant’s proprietary AMERICAN JOURNEY mark, in connection with competitive pet products and services, intended to deceive consumers. Such use is neither a bona fide offering of goods nor a legitimate non-commercial or fair use. Rather, it is a clear attempt to capitalize on Complainant’s reputation and to mislead Internet users for commercial gain.

According to Complainant the disputed domain name was registered and is being used in bad faith. Complainant asserts that the disputed domain name was registered long after Complainant had established trademark rights in AMERICAN JOURNEY. Respondent has used the disputed domain name in order to advertise to Internet users its website, which offers pet-related products and services under the counterfeit AMERICAN JOURNEY mark. Thus, Respondent’s use of the disputed domain name to host an infringing website that imitates the website of Complainant and to offer pet-related products and services under the AMERICAN JOURNEY brand name constitutes a deliberate effort to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.

Respondent:
No administratively compliant Response has been filed.

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

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

Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is 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.

In the opinion of the Panel the disputed domain name is confusingly similar to Complainant's AMERICAN JOURNEY trademark. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the relevant trademark is recognizable within the disputed domain name. Complainant has established that it is the owner of a trademark registration for AMERICAN JOURNEY. The disputed domain name incorporates the entirety of the AMERICAN JOURNEY trademark as its distinctive element. The addition of the descriptive term “shop” is insufficient to avoid a finding of confusing similarity. The Top-Level Domain ( “gTLD”) “.com” in the disputed domain name may be disregarded.
The Panel notes that Complainant’s registration of its trademark predates the creation date of the disputed domain name. 

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain name incorporating its mark. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent. In addition, Complainant has demonstrated that the disputed domain name resolves to a website imitating the website of Complainant and marketing AMERICAN JOURNEY branded pet products directly to consumers. 

Respondent did not submit any response. Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.  

The Panel finds that the disputed domain name has been registered and is being used in bad faith. Complainant has rights in the AMERICAN JOURNEY trademark. Respondent knew or should have known that the disputed domain name includes Complainant’s mark.
The Panel also notes the undisputed submission of Complainant, supported by evidence, that the disputed domain name resolves to a website which incorporates Complainant’s trademark in its entirety and which sells AMERICAN JOURNEY branded products, which indicates that Respondent registered and uses the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.