The Complainant is Chewy Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Rostislav Karyi / Ростислав Карый, Ukraine.
The disputed domain name <chewy.com.ua> is registered with HOSTPRO LAB LTD (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, 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 and contact information in the Complaint. On March 9, 2020, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Russian, and inviting the Parties to submit their preference as to the language of the proceeding. On March 13, 2020, the Complainant submitted an amended Complaint including its request that English be the language of the proceeding.
The Center verified that the Complaint and the amended Complaint (hereinafter referred both together as the “Complaint”) satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”) the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint with a notification email in Russian and in English, and the proceedings commenced on March 24, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was April 13, 2020. The Center notified the Respondent’s default on April 14, 2020.
The Center appointed Ganna Prokhorova as the sole panelist in this matter on April 17, 2020. 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 .UA Rules, paragraph 7.
The Complainant is Chewy, Inc. (Chewy), a United States corporation with its global headquarters in Dania Beach, Florida. The Complainant was launched in 2011 and is one of the largest online retailer of pet supply products in the United States. The Complainant registered USD 26 million in sales during its first full year in business, and approximately USD 3.5 billion in revenue at the end of its 2018 fiscal year. The Complainant employs approximately 10,000 as of 2018. The Complainant went public on June 14, 2019.
The Complainant is the owner of United States trademarks No. 5028009, CHEWY as of August 23, 2016, No. 5834442, CHEWY as of August 13, 2019, No. 4346308, CHEWY.COM as of June 4, 2013, and European Union trademarks No. 016605834 CHEWY.COM as of August 10, 2017, No. 018101754, CHEWY as of December 14, 2019, all registered for services in class 35 (hereinafter referred all together as the “CHEWY Marks”).
The Complainant is consistently listed as one of the top online pet supply retailer. It also currently holds a 9.9 (out of 10) rating on Best Company rankings based on customer satisfaction reviews, and is ranked in the top 500 United States employers to work for on the 2019 Forbes List of America’s Best Employer’s.
The disputed domain name was originally registered on August 7, 2018. According to the evidence provided by the Complainant, the disputed domain name resolved to a website purporting to sell products competing with the Complainant’s products.
The Complainant is the owner of numerous registrations for the trademark/service marks CHEWY and/or CHEWY.COM in the United States and in various jurisdictions around the world, in particular: United States trademarks No. 5028009, CHEWY as of August 23, 2016, No. 5834442, CHEWY as of August 13, 2019, No. 4346308, CHEWY.COM as of June 4, 2013, and European Union trademarks No. 016605834 CHEWY.COM as of August 10, 2017, No. 018101754, CHEWY as of December 14, 2019, all registered for services in class 35.. The Complainant’s trademark/service mark CHEWY has been used by the Complainant in commerce in the United States since at least as early as 2016, whereas trademark/service mark CHEWY.COM has been used by the Complainant in commerce in the United States since at least as early as 2012.
The Complainant has heavily promoted the CHEWY Marks, and the CHEWY Marks have widespread recognition in the United States and worldwide. In addition, the CHEWY Marks are frequently mentioned in top periodicals and other news sources in the United States and accessible to Internet users in the United States.
The Complainant also owns domain names that include the CHEWY Marks, including <chewy.com> (registered by the Complainant predecessor in interest on June 17, 2011; originally registered on April 18, 2004) and <chewy.net> (registered by the Complainant predecessor in interest on July 12, 2016; originally registered on September 3, 1999). Some of these domain names have been used in the Complainant’s business as early as 2012 and have been continuously used and associated with the Complainant’s business since that time. For example, <chewy.com> directs Internet users to the Complainant’s primary website, which makes extensive use of the CHEWY Marks.
The disputed domain name is identical and confusingly similar to the Complainant’s CHEWY Marks.
Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been authorized by the Complainant to use the CHEWY Marks in any manner, much less as part of the disputed domain name. On information and belief, the Disputed Domain Name does not reflect the Respondent’s common name or organization name.
The disputed domain name resolves to a website impersonating the legitimate website of the Complainant, but with certain content in Ukrainian, including through the misappropriation of the identical CHEWY trademark. The website purports to offer pet supply products in direct competition with those offered by the Complainant under the identical CHEWY trademark.
The Respondent is also using the disputed domain name to redirect Internet users to a website that ostensibly directly competes with the Complainant, by unfairly trading on the goodwill associated with the Complainant.
For the above reasons, the disputed domain name is confusingly similar to Complainant’s CHEWY Marks, Respondent lacks rights or legitimate interest in the disputed domain name, and the disputed domain name was registered or used in bad faith, in violation of .UA Policy (4)(a).
The Respondent did not file a Response to the Complaint.
Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Russian.
The Complainant has filed the Complaint in English and requested English to be the language of this proceeding based on Respondent’s registration of a domain name including an English-language trademark (i.e. CHEWY, being in Latin characters instead of Cyrillic) and that various content associated with the disputed domain name are provided in English. The Respondent has not replied to the email on the language of the proceeding nor has submitted any email communication in this proceeding.
Whilst there is a language requirement in paragraph 11(a) of the .UA Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Michael Kors (Switzerland) International GmbH. v. Minakova Maria, WIPO Case No. DUA2020-0002).
In this case, the Panel is proficient in both Russian and English. The Panel noted that the Respondent did not provide any arguments or supporting materials as to why the proceedings should not be conducted in English. The Panel also notes that the Center has sent all of its email communications to the Parties in both languages English and Russian. The Panel also finds that substantial additional expense and delay would likely be incurred if Complainant is ordered to translate its filing.
Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
In accordance with paragraph 4(a) of the .UA Policy, the Complainant must prove:
(i) that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered or is being used in bad faith.
The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions (Stanworth Development Limited v E Net Marketing Ltd., WIPO Case No. D2007-1228). However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Given the many similarities between the terms of the .UA Policy and the terms of the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights.
As evidenced in the Complaint, the Complainant is the owner of several trademarks, which enjoy a widespread reputation and predate the registration of the disputed domain name.
It has been repeatedly held that if a complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights under paragraph 4(a)(i) of the UDRP and can therefore challenge the validity of a domain name containing that trademark (see Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La Casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661).
The Complainant further states that the disputed domain name is identical to the CHEWY Marks at the Third-Level, and the only difference between Complainant’s CHEWY Marks and the Disputed Domain Name is the addition of the “.com” Second-Level extension and the country code Top-Level-Domain (“ccTLD”) “.UA” extension. According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. The Panel finds that the same approach shall be applied in the present case with the Second-Level Domain and ccTLD “com.ua” (see Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).
Similarly, the disputed domain name is identical to the Complainant’s CHEWY.COM trademark, with the only difference being that the disputed domain name appends the “.UA” ccTLD extension to the mark.
Thus, the disputed domain dame is identical to the Complainant’s CHEWY Marks.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the .UA Policy.
Under paragraph 4(a)(ii) of the .UA Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Indeed, it is well established that, as it is put in the WIPO Overview 3.0, section 2.1, while the overall burden of proof in the proceedings is on the complainant, proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the .UA Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Barcade, Inc. v. Miguel Sandoval WIPO Case No. DVG2016-0001).
The disputed domain name was registered by the Respondent well after the Complainant had registered the CHEWY Marks and had established extensive goodwill from its use.
According to the Complainant, the Respondent has never been authorized to use the CHEWY Marks in any manner, much less as part of the disputed domain name.
Furthermore, the Panel finds that the Respondent is not commonly known by the disputed domain name, and neither of the conditions under paragraph 4(c)(i)-(iii) of the .UA Policy are applicable.
On information and belief of the Complainant, the Respondent willfully adopted the Complainant’s trademark(s) within the disputed domain name in an attempt to unfairly capitalize on the valuable goodwill the Complainant has built in its CHEWY Marks in order to sell competing pet supply products or, more likely, to steal personal and financial information and payments by misleading Internet users attracted to the Respondent’s website located at the disputed domain name into believing they are doing business with the Complainant or an authorized affiliate of the Complainant.
Absent a showing to the contrary by the Respondent, the Complainant has therefore established that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the second element of the .UA Policy under paragraph 4(a)(ii).
According to paragraph 4(a)(ii) of the .UA Policy it should be established that the disputed domain name has been registered or is being used in bad faith.
Paragraph 4(b) of the .UA Policy sets out a series of circumstances that, if found, provide evidence of registration and use in bad faith for paragraph 4(a)(iii) purposes, namely: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
According to the Complainant, the Respondent’s registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(iii) of the .UA Policy, since the Respondent is using the disputed domain name to redirect Internet users to a website that ostensibly directly competes with the Complainant, by unfairly trading on the goodwill associated with the Complainant’s CHEWY Marks. Accordingly, the Respondent is disrupting the Complainant’s business by diverting business and prospective business away from the Complainant and its goods and services, to those of an ostensible competitor. This activity is done in opposition to the Complainant and is disruptive to the Complainant’s business and therefore evidences bad faith under paragraph 4(b)(iii) of the .UA Policy (see WIPO Overview 3.0, section 3.1.3; see also, e.g., Virgin Enterprises Limited v. Jay Cannon, WIPO Case No. D2016-0452; Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279). The Panel agrees that the Respondent’s registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(iii) of the .UA Policy.
The Complainant contends that the Respondent’s registration and use of the disputed domain name also constitutes bad faith under paragraph 4(b)(iv) of the .UA Policy. The Respondent has misappropriated the identical CHEWY trademark in connection with a website purportedly offering for sale pet supply products in direct competition with those offered by the Complainant, under the identical CHEWY trademark. Members of the public are likely to believe that the Respondent’s goods or services promoted with the CHEWY trademark are sponsored by, affiliated with or emanate from the Complainant, because the mark is identical to the Complainant’s trademark and is being used with identical goods and services. The purpose of the Respondent is to take advantage of the confusion caused by the disputed domain name and its similarity to the CHEWY Marks, to redirect web traffic away from the Complainant and to the Respondent’s website, for commercial gain (see WIPO Overview 3.0, section 3.1.4; see also OLX, B.V. v. Glenn Monfort, Cyberthread Solutions Inc., WIPO Case No. D2015-1899).
Furthermore, noting 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. Furthermore, on the day of consideration of the Complaint, the disputed domain name redirected Internet users to the website under the domain name <hobbizoo.com.ua> offering pet supply products.
The Panel finds that the above facts is clear evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the .UA Policy.
The Complainant also asserts that the Respondent was on notice of the Complainant’s referenced marks prior to registering the disputed domain name, given the fame of the Complainant’s marks and the Respondent’s clear targeting of the Complainant’s brand in an effort to trade on the goodwill associated with this brand in connection with pet supply products, further evidencing the Respondent’s bad faith intent in registering and using the Disputed Domain Name. The Panel agrees that finding actual knowledge of the Complainant’s mark in light of its fame and the use of the disputed domain name evidences bad faith registration and use (eBay Inc. v. ebayMoving c/o Izik Apo, supra, WIPO Case No. D2006-1307; T. Rowe Price Group, Inc. v. Skyler Hulslander, WIPO Case No. D2018-1582).
The Panel has moreover found the following types of evidence to support a finding that the Respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to the complainant’s (or a competitor’s) website, and (v) absence of any conceivable good faith use). There is no evidence of any other conceivable good faith use.
Therefore, to sum up, the only conclusion that can be drawn from the evidence is that the Respondent has registered and used the disputed domain name in bad faith in accordance with Section 4(b) of the .UA Policy.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <chewy.com.ua> be transferred to the Complainant.
Ganna Prokhorova
Sole Panelist
Date: May 1, 2020