PetSmart is smarting at UDRP loss in Vietnam

Many WIPO domain name cases are relatively straightforward when a company copies a famous mark. A number of the cases from SE Asia involve a local company/person who’s domain name is too close to a famous foreign mark and there is no legitimate reason for them to have it. Examples are rolex-group.com owned by a Filipino orthaiyahoo.org by a Thai person. 

A case from Vietnam Pet Smart v Pet Mart shows a different type of situation. PetSmart Inc is the largest US pet store company based in Arizona with several thousand facilities. They filed a UDRP case against 3 domain names – PetMart.info, PetMartVietnam.com, and PetMartVN.com.

PetMart Viet Nam Co. Ltd is a Hanoi based pet business. It is not very large but quite popular in Vietnam. It was established in Hanoi in 2012. It sells products and accessories (online and offline) for pets and provides pet-related services. In addition to the Head office in Hanoi, it has 17 stores / branches in Hanoi, Saigon, Da Nang and Hai Phong.

The crux of the decision therefore is whether Pet Mart had a legitimate interest in the domain name. The panelist concluded that they did. He had to balance competing rights. PetMart registered a trademark and they trade in Vietnam. PetSmart had its own marks but these were filed in Vietnam later than PetMart’s. As a result PetSmart could not prove that PetMart were deliberately taking unfair advantage. The marks are certainly quite similar and there is possibility it was set up to piggy back on PetSmart. But the evidence did not show that conclusively.

The case shows the limitations of a UDRP case against a business which has become well established, whether or not it copied the international brand owner. A safer route may be to challenge the underlying trademark itself.