WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chewy, Inc. v. Li Hou Chang
Case No. D2019-1845
1. The Parties
The Complainant is Chewy, Inc., United States of America, represented by Winterfeldt IP Group PLLC, United States of America (“United States”).
The Respondent is Li Hou Chang, China.
2. The Domain Name and Registrar
The disputed domain name <chwy.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On August 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2019, 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. The Center sent an email communication to the Complainant on August 7, 2019 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 in English on August 8, 2019.
On August 7, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant included in its amended Complaint a request that English be the language of the proceeding. On August 8, 2019, the Respondent requested that the language of the proceeding be Chinese.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. The Respondent filed the Response in Chinese on September 15, 2019. The Respondent sent email communications on August 8, 9, 10, 14, 16, and 26 regarding the case.
On September 20, 2019, the Complainant submitted an unsolicited supplementary statement to the Center in English. On September 23, 2019, the Respondent submitted an email to the Center in Chinese, objecting to the submission of the Complainant’s supplementary statement.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 2, 2019. 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
A. Complainant
The Complainant is a company incorporated in the United States, and is one of the largest online retailers of pet supply products in the United States, operating under the trade mark CHEWY (the “Trade Mark”) since 2012.
The Complainant is the owner of several registrations in the United States for or comprising the Trade Mark, including registration No. 5028009, registered on August 23, 2016; and registration No. 4346308 (for the trade mark CHEWY.COM), registered on June 4, 2013.
The Complainant filed several pending applications for registration of the Trade Mark and its Chinese language transliteration in China in June and July 2017.
The Complainant is also the owner of several domain names comprising the Trade Mark, including (since June 17, 2011) <chewy.com>.
The Complainant has been listed on the New York Stock Exchange since June 4, 2019, under the stock ticker symbol CHWY.
B. Respondent
The Respondent is an individual based in China.
C. The Disputed Domain Name
The disputed domain name was initially registered on June 11, 2005.
The disputed domain name was registered in the name of the Respondent on June 20, 2019.
D. The Website at the Disputed Domain Name
Prior to the filing of the Complaint herein, the disputed domain name was resolved to the Complainant’s website at “www.chewy.com” (the “Complainant’s Website”) using the web traffic monetisation platforms <bidr.trellian.com>, <noclick.connexity.com> and <rd.bizrate.com> (the “Respondent’s Website”).
As at the date of this Decision, the disputed domain name is no longer resolved to any active website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
B. Respondent
In respect of the first limb under paragraph 4(a) of the Policy, the Respondent contends that the Trade Mark is not a well-known trade mark in China, the Complainant does not have any registrations for the Trade Mark in China, the Complainant’s Website is an English language website targeted at consumers in the United States and not in China, and an (apparently unrelated) third party company in China has registered the trade mark CHWY in China in respect of different goods or services to those of the Complainant. For these reasons the Respondent contends that (1) it can be inferred the Complainant has not obtained the necessary approvals to conduct business in China; and (2) there is no risk of consumer confusion.
In respect of the second limb, the Respondent contends that, before receiving notification of this proceeding, the disputed domain name was simply resolved to the Registrar’s DNS server; and the Respondent registered the disputed domain name, not to illegally tarnish the Complainant’s Trade Mark, but for the Respondent’s own business purposes.
In respect of the third limb, the Respondent contends that, when the disputed domain name was first registered on June 11, 2005, the Complainant was not in operation and did not possess any relevant rights in the Trade Mark; the Complainant has no rights in the Trade Mark in China; and the Respondent was not aware of the Complainant and of its Trade Mark when it registered the disputed domain name. In response to the Complainant’s evidence of the Respondent’s monetisation of the disputed domain name via the Respondent’s Website, the Respondent asserts that the Respondent does not believe that the disputed domain name has been redirected to the Complainant’s Website. The Respondent contends further that the Respondent registered the disputed domain name for the Respondent’s business development purposes and in respect of the Respondent’s website project, which is yet to go online. The Respondent also contends that the term “chwy” is just a simple combination of the letters C, H, W, and Y, and thus is not distinctive to the public; there are numerous generic Top-Level Domains (“gTLD”) containing the term “chwy”, which shows that the Complainant does not have exclusive rights in the term and anyone can use it, including the Respondent; and the fact that the Respondent chose and registered the term cannot demonstrate his bad faith.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant contends in support of its language request that, because the disputed domain name is an approximation of a word in English and of an English language Trade Mark, and because the Respondent’s Website is in English, the Respondent is able to communicate in English.
The Respondent asserts that the Respondent does not understand English.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds the evidence relied upon by the Complainant is sufficient to establish at least a prima facie case that the Respondent is conversant in English, notwithstanding the Respondent’s contention that the Respondent does not understand English. The Panel notes also that the Respondent has been able to file its Chinese language Response without apparent difficulty. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel therefore determines, under paragraph 11(a) of the Rules, that it will:
(i) Accept the filing of the Complaint and the amended Complaint in English;
(ii) Accept the filing of the Response in Chinese; and
(iii) Render this decision in English.
6.2 Supplemental Filing
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response.
Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6).
The Complainant’s supplemental filing amounts to a statement in reply, which is not typically allowed for in UDRP proceedings.
The Complainant has failed to provide any reasons in support of its unsolicited supplemental filing, nor has the Complainant explained why the submissions made in the statement in reply could not have been made in the Complaint or the amended Complaint.
In all the circumstances, the Panel therefore determines that it will not admit the Complainant’s supplemental filing.
6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The fact the Complainant’s registrations for the Trade Mark postdate the date of registration of the disputed domain name is immaterial for the purposes of the first limb under paragraph 4(a) of the Policy (see WIPO Overview 3.0, section 1.1.3).
The jurisdiction(s) where the Trade Mark is valid is not considered relevant to panel assessment under the first element (see WIPO Overview 3.0, section 1.1.2). In any event, although not determinative in respect of the first limb, the Panel considers the Complainant has filed sufficient evidence to demonstrate that it does enjoy some reputation in the Trade Mark in China, where the Respondent is based.
The disputed domain name consists of a common, obvious, or intentional misspelling of the Trade Mark (see WIPO Overview 3.0, section 1.9). It is also identical to the Complainant’s stock ticker symbol (disregarding the gTLD).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, 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 organization) 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 noncommercial 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.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Respondent’s Website, in order to capitalise on the Complainant’s rights in the Trade Mark to gain unauthorised revenue via web traffic monetisation platforms.
The Respondent has not provided any details of the third party trade mark registration in China for the trade mark CHWY other than the name of the alleged owner of the trade mark registration. Furthermore, the Respondent does not contend that it has any business or other relationship with the owner of the alleged CHWY trade mark registration in China, nor does the Respondent contend that the Respondent has been licensed or authorised to use the said trade mark.
The Respondent has not in fact placed before the Panel any evidence of it use, or of its planned use, of the disputed domain name, or of the name or brand CHWY. The Respondent has not submitted any evidence in respect of its claimed website development project. In short, there is no evidence of any use by the Respondent of the disputed domain name other than, previously, in respect of the Respondent’s Website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to the historical WhoIS searches for the disputed domain name filed together with the amended Complaint, the ownership of the disputed domain name has changed numerous times over the years since it was first registered on June 11, 2005. The Respondent does not contend that it has any relationship with the previous registered owners of the disputed domain name, but simply asserts that the disputed domain name has been registered since 2005. Section 3.8.1 of WIPO Overview 3.0 provides as follows:
“Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trade mark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.”
The evidence before the Panel demonstrates that the Respondent acquired the disputed domain name on or about June 20, 2019.
For the above reasons, and in light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
In all the circumstances, the Panel finds it is inconceivable the Respondent was not aware of the Complainant and of the Complainant’s Trade Mark when the Respondent acquired the disputed domain name. In this regard the Panel does not find the Respondent’s denial in the Response convincing.
In particular, the Panel considers there is force in the argument of the Complainant that the Respondent registered and commenced using the disputed domain name, which happens to be identical to the stock ticker symbol for the Complainant, shortly after the Complainant’s impending listing on the New York Stock Exchange was announced to the public, in early June 2019.
The Panel also considers the fact the Respondent’s Website was taken down after the filing of the Complaint, notwithstanding the Respondent’s bare assertions as to its planned website project, lends further support to a finding of bad faith.
For the foregoing reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
6.4 Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
RDNH is further defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name” (see WIPO Overview 3.0, section 4.16).
The Complainant has prevailed in this proceeding. The Panel is unable to find any grounds in support of a finding of RDNH.
In all the circumstances, the Panel declines to make any finding of RDNH against the Complainant, or to make any finding that the Complaint and the amended Complaint were otherwise filed in bad faith or for improper purposes.
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 <chwy.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 16, 2019
