Pet Mart of Vietnam Beats PetSmart in UDRP

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PetSmart is one of, if not the largest, pet care companies in the United States. My wife and I occasionally shop at PetSmart when we need something for our puggle and it is convenient for us. The company filed a UDRP against three domain names – PetMart.info, PetMartVietnam.com, and PetMartVN.com. The UDRP decision was published yesterday, and the Vietnamese respondent prevailed in the WIPO decision.

Interestingly, when you look at PetMart.info, you can see the logo colors are very similar to the well known logo of PetSmart. However, the PetSmart logo is well-known in the United States, and I don’t really know if that is the case in another country like Vietnam. Also interestingly, it appears that the respondent in the UDRP has a registered mark in its home country, which offered protection for the domain names it is using.

The real heart of this UDRP decision is in the section about Rights or Legitimate Interests. I think people with a particular interest in Intellectual Property Law will appreciate the lengthy discussion from the sole panelist, Andrew D. S. Lothian. Take a moment to review the reasoning for the decision, but the concluding paragraph has a synopsis:

“In conclusion, on this topic, while there is an identity between the Parties’ respective lines of business and some similarity of marks and trading styles, the Respondent appears to be operating a genuine business in Viet Nam, pre-dating the registration of the Complainant’s Vietnamese trademarks, and the Respondent has registered the disputed domain names for use in connection with that business. The Complainant has not demonstrated to the Panel’s satisfaction that the Respondent’s business activities were predicated upon and targeted to take unfair advantage of the Complainant’s rights, nor provided sufficient evidence addressing the Respondent’s rebuttal from which this might have been reasonably inferred. In all of the above circumstances, while a close call in some respects, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain names and accordingly that the second element under the Policy has not been established. The Complaint therefore fails.”

Making this even more of a David vs. Goliath story, the respondent in the UDRP was self-represented, while PetSmart was represented by Winterfeldt IP Group PLLC, a highly respected law firm. Considering there were supplemental filings in this UDRP proceeding, I would imagine it was quite costly for PetSmart. It will be interesting to see if the company pursues this further.

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