WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PetSmart, Inc. v. Pet Mart
Case No. D2020-2065
1. The Parties
The Complainant is PetSmart, Inc., United States of America (“USA”), represented by Winterfeldt IP Group PLLC, USA.
The Respondent is Pet Mart, Viet Nam, self-represented.
2. The Domain Names and Registrar
The disputed domain names <petmart.info>, <petmartvietnam.com>, and <petmartvn.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. On August 13, 2020, the Respondent sent an inquiry email to the Center. An informal Response was filed with the Center by two emails on August 13 and 14, 2020 respectively, and a third email on September 1, 2020. On August 17, 2020, the Complainant submitted a supplemental filing to the Center.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 15, 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 Rules, paragraph 7.
4. Factual Background
The Complainant is PetSmart, Inc., a corporation organized under the laws of the USA and the State of Delaware, founded in 1986 and having its headquarters in Phoenix, Arizona, USA. It is currently the largest pet retailer in the USA with around 55,000 employees, 1,650 pet stores and 200 dog/cat boarding facilities, and is also a provider of veterinary services. The Complainant has reported USD eight billion in revenues and was accorded the No. 1 entry in Pet Business Magazine’s 2018 “Top 25 Pet Retailers in North America”.
The Complainant or its affiliated entities are the owners of a variety of registered trademarks globally both for the word mark PETSMART and for a design and word mark which the Complainant uses as its logo. For example, the Complainant owns USA registered trademark No. 1559337 for the word mark PETSMART, registered on October 3, 1989 in international class 42 (retail pet store services) and USA registered trademark No. 3196334 for the following design and stylized word mark, registered on January 9, 2007 in international classes 35, 41, 43, 44, and 45 (various pet-related services):
In Viet Nam, where the Respondent is based, the Complainant is the owner of Vietnamese registered trademark No. 40299488000 for the word mark PETSMART, filed June 2, 2016 and registered on May 10, 2018 in international classes 35, 43, and 44 (various pet-related services). The Complainant also owns two other Vietnamese registered trademarks, Nos. 40299309000 and 40304759000 in respect of monochrome and color versions of its above logo. These were also filed on June 2, 2016 but registered on May 9, 2018 and August 15, 2018 respectively. The history of the latter registered mark shows that additional documentation was supplied on June 12, 2018 before said mark was granted.
The Complainant maintains a variety of domain names including <petsmart.com>, registered on July 19, 1995 which is used for its primary website featuring an online pet supplies store.
The disputed domain names are as follows:
1. <petmart.info> registered on May 6, 2018. This disputed domain name is used for a “blog” style website in the Vietnamese language featuring articles on pet care, some of which appear to promote related products;
2. <petmartvn.com> registered on September 24, 2019. This disputed domain name is parked on a registrar parking page which also offers said disputed domain name for sale;
3. <petmartvietnam.com> registered on June 2, 2020. This disputed domain name is parked on a registrar parking page which also offers said disputed domain name for sale.
Although the registrant of the disputed domain names is simply listed as: “Pet Mart”, with an address in Viet Nam, the Response has been filed in the name of “Công Ty TNHH PETMART Việt Nam” or, in English, PetMart Viet Nam Co. Ltd., Vietnamese limited company No. 0106683363. According to an entry from the relevant register supplied by the Respondent, said company was incorporated on May 11, 2014 and has its head office in Hanoi, Viet Nam.
The Respondent is in a similar line of business to that of the Complainant. A translation of the Respondent’s introduction page on the website at “www.petmart.info” indicates that the Respondent’s history runs “from the first bricks in 2012 to <petmart.vn> and <petmart.info>“. The domain name <petmart.vn> operates the contact email address for all of the disputed domain names and is also the source of the emails which make up the Response. Neither of the Parties provided information regarding <petmart.vn> and the Panel decided to view the WhoIs record for said domain name and the corresponding website (on the topic of the Panel engaging in limited factual research into matters of public record, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel noted that said domain name was registered on October 1, 2012 to what appears to be a Vietnamese individual and that the corresponding website promotes the Respondent’s said business and offers various pet supplies for online sale.
The Response appears to have been prepared without legal representation and consists of a series of three emails and a range of unindexed individual images and PDF files. The Complainant’s translated screenshot of the website at the disputed domain name <petmart.info> entitled “Pet Mart Delivery Policy” suggests under the heading “Address of Store System” that the Respondent has around 17 physical store locations across Viet Nam, photographs of five of which have been provided. Judging by the street numbers shown, at least four of the five examples are “Pet Mart” branded stores situated at various addresses in Hanoi, Viet Nam.
The Respondent is the owner of Vietnamese registered trademark No. 279157 for a figurative mark featuring a monochrome cartoon image of dog and cat above the lowercase word petmart, filed on March 27, 2015 and registered on April 5, 2017 in respect of international classes 35, 43, 44, and 45 (pet retail, veterinary medicine, pet temporary accommodation, pet grooming, pet babysitting and pet funerals). Said mark features a disclaimer indicating that only the mark as a whole is protected and not the word “petmart” or depictions of cats and dogs. The Respondent has used a red/blue colored version of the word element of said figurative mark on the website associated with <petmart.info> which has the following appearance:
Since the Complainant took its screenshots of said website, the Respondent appears to have added the cat/dog element of its said figurative registered trademark back into said website logo in color, albeit at the right hand side rather than above, which has the following appearance:
5. Parties’ Contentions
The Complainant contends as follows in the amended Complaint:
The Complainant has promoted the PETSMART marks globally and the corresponding goods and services are well-publicized in the media. The PETSMART marks have widespread recognition in the USA, Viet Nam and worldwide (evidence provided of six media reports: an article covering the USA online pet food and supplies market from January 2019, two USA local news stories from Texas (December 2018) and Virginia (January 2019) respectively relating to charitable grants made by the Complainant’s charities, and three untranslated news stories in the Vietnamese language dated June 2014, July 2018, and January 2020). The disputed domain names were registered well after the PETSMART marks were first used in commerce by the Complainant in 1988. The <petmart.info> disputed domain name resolves to a website named “PetMart” that ostensibly competes directly with the Complainant.
Identical or Confusingly Similar
The disputed domain names are nearly identical to the Complainant’s PETSMART mark with the only differences between the respective second levels of the disputed domain names and said mark, namely a missing letter “s” in each of the disputed domain names between the words “pet” and “mart” and missing geographically descriptive suffixes “vietnam” and “vn” in the latter two of the disputed domain names.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain names, has never been authorized to use the Complainant’s PETSMART mark and registered the disputed domain names well after the Complainant used its PETSMART mark and established extensive goodwill. The Respondent does not use the <petmart.info> disputed domain name in connection with a bona fide offering of goods or services but in connection with goods and services directly competing with those of the Complainant. The Respondent cannot be considered to be commonly known by the name “PetMart” when this has been adopted specifically to infringe on the Complainant’s mark, trade on its goodwill, and confuse consumers as to a possible association between the Parties. The remaining disputed domain names, which are currently used for parked pages, cannot confer rights or legitimate interests upon the Respondent.
Registered and Used in Bad Faith
The Respondent has engaged in a bad faith pattern of targeting the Complainant’s mark, having registered and used the disputed domain names to draw Internet users to the Respondent’s competing website or hosting parked pages. The Respondent is disrupting the Complainant’s business by redirecting users seeking the Complainant’s legitimate content, allowing the Respondent to monetize such traffic. The use of a misspelling of the Complainant’s well-known trademark for such purposes is clear evidence of bad faith registration and use. The non-use of two of the disputed domain names would not prevent a finding of bad faith under the doctrine of passive holding. The Respondent has no colorable argument that it is unaware of the Complainant’s well-known brand and the use of nearly identical red/blue designs demonstrates awareness of such brand and intent to mimic this to cause consumer confusion. The Respondent was on notice of the Complainant’s PETSMART mark before registering the disputed domain names due to the global fame and notoriety thereof.
As noted above, the Respondent does not appear to be represented. The Panel has therefore combined the Respondent’s first two emails and endeavored to summarize these below, removing duplicate arguments. The Respondent’s third email, while received ahead of the Response deadline, was intended to reply to the Complainant’s supplemental filing and it will therefore be summarized in a subsequent section.
The Respondent contends as follows in its first two emails:
Identical or Confusingly Similar
The disputed domain names are not confusingly similar to the Complainant’s PETSMART trademark because they all use the phrase “PetMart”. There are a number of third party domains online which also use this term including inter alia <petmart.co.nz>, <megapetmart.com>, <petmart.cn>, <petespetmart.com>, and <perryspetmart.ca>.
Rights or Legitimate Interests and Registered and Used in Bad Faith
The Respondent operates a business whose registered company name includes “PetMart”, which is different from PETSMART. The Respondent has obtained senior trademark protection in Viet Nam for its logo, filed in 2015 and registered in 2017, and it is allowed to register corresponding domain names. The Complainant’s application for Vietnamese trademark No. 40304759000 had documentation rejected by the registration authority.
The Respondent’s business caters for Vietnamese people, operates in the Vietnamese language only and has its own fame and reputation in the pet industry in Viet Nam, built up since 2011 and operating the largest chain of pet stores in that country. The Respondent’s business features on local television and in the local press (untranslated evidence and screenshots provided). The Respondent does not use the Complainant’s logo, trademark, or images. Most of the Respondent’s website traffic originates from Viet Nam, not the USA, and it does not cater to consumers from the USA or other countries.
The Complainant has not proved that it is known worldwide or specifically in Viet Nam and any such assertion is unsubstantiated. The Complainant only has stores in the USA. The Respondent is well known in Viet Nam. There are fewer people searching for the Complainant’s brand in Viet Nam, in the local language, than for the Respondent’s brand. Searches for the term “Pet Mart” disclose a “medium” rated search volume and 9,900 searches while the competition is generally noted as “low” and there are 720 searches for “Petsmart”, disclosing a “low” rated volume (evidence provided). The second and third disputed domain names specifically mention Viet Nam. The Complainant does not have any corresponding presence and is unknown in Viet Nam. It has no local stores. There can be no confusion. When an attempt was made by the Respondent to reach the Complainant’s website via computer and mobile connections, it was not accessible from within Viet Nam (evidence provided).
The alleged similarity of red/blue coloring used by the Parties is merely the Complainant’s subjective opinion. Blue/red is a popular combination used by many brands. The Respondent’s shades are different from the shades in the Complainant’s mark and are based upon the color scheme of an idea of Viet Nam’s flag in 1975 (evidence provided). The three articles produced by the Complainant do not demonstrate the notoriety of PETSMART in Viet Nam in that they are merely translations of foreign press stories and, in two of these, the Complainant is mentioned only incidentally. The second and third disputed domain names are merely on registrar parking pages due to use of default DNS because the Respondent has yet to develop these but will be entitled to do so in connection with its business.
C. Complainant’s Supplemental Filing
The Complainant replies to the Response as follows:
“Petmart” is still confusingly similar to PETSMART and has been found to be so in a previous case under the Policy. Any other domain names incorporating the “petmart” term are irrelevant in assessing confusing similarity of the disputed domain names to the Complainant’s mark.
The Respondent’s website does not actually use the registered trademark asserted by the Respondent but only the red/blue word that imitates the PETSMART trademark. The other two disputed domain names are merely parked and this constitutes passive holding and is not grounds for finding rights and legitimate interests under the Policy.
The Respondent has said that the active website associated with <petmart.info> (“the active website”) is restricted to pet care information but it is designed to facilitate pet supply products with accompanying pricing and promotes purported brick-and-mortar retail locations which directly compete with the Complainant’s business under a nearly identical imitative mark. The Respondent denies collecting user information or use for fraudulent purposes, which the Complainant did not allege. Although the Respondent alleges that the active website is intended for Vietnamese people and is in the local language, it is clearly accessible to Internet users globally and the Complainant could access this from the USA. The two parked pages are in English. A domain name can meet the elements under the Policy regardless of the audience intended by the registrant.
The Respondent’s registered trademark contains a disclaimer that the registration does not protect the use of “petmart” or depictions of cats or dogs as individual elements apart from the mark as a whole, yet the Respondent does not use the mark as a whole on the active website. The active website and the disputed domain names trade on the goodwill of the Complainant’s long-standing and famous PETSMART marks, used in commerce since 1988 and having global notoriety and fame whereby the Respondent could not argue that it was unaware thereof when it registered the disputed domain names for use in a competing business.
The disputed domain names were registered either days before the Complainant’s PETSMART marks were registered in Viet Nam and well after such marks were applied for (<petmart.info>) or otherwise well after registration of such marks were granted (<petmartvietnam.com> and <petmartvn.com>) supporting the contention that they were registered and used in bad faith and in full knowledge of the Complainant’s marks.
D. Respondent’s additional Response
The Respondent makes the following contentions in its final email, filed after the Complainant’s supplemental filing but before the Response deadline (the Panel has endeavored to remove arguments which are repetitions of the Respondent’s earlier submissions):
English is a common language used worldwide. The words “pet” and “mart” best describe the products and services of companies in the pet industry. The Respondent uses this term in its advertising signs (evidence provided). In the sign “PET MART - CỬA HÀNG THÚ CƯNG”, “CỬA HÀNG” means “Mart” and “THÚ CƯNG” means “Pet”. This is a descriptive use which is permissible worldwide and is frequently used within the industry. The Complainant cannot claim exclusive use of the term. The Respondent trades under such term but differentiates itself by way of its logo, protected by registered trademark.
The previous case under the Policy, cited by the Complainant to demonstrate confusing similarity, is not apposite because the respondent in that case does not have a similar case to the Respondent here, namely, it did not have stores and a logo with trademark protection and was not the official user of the “PetMart” brand in Viet Nam. (Photographs of some of the Respondent’s physical stores are provided.) The Respondent’s entire trademark protected logo has now been placed on the active website. The use of “Vietnam”, “VN”, and the Vietnamese language on the Respondent’s websites ensures that no American visitor will translate these and buy products for pets from the Respondent. The right to use the active website for the sale of products in Viet Nam is reserved and would be permitted under Vietnamese law. The Complainant may have asserted that it can access the Respondent’s active website from the USA, yet the Respondent can demonstrate that it cannot access the Complainant’s site from Viet Nam. No convincing evidence has been forthcoming that the PETSMART mark is known worldwide and according to the Respondent the Complainant is not in the same position as a hypothetical USA-based company which has opened local stores around the globe.
The Respondent does not monitor trademark registrations in Viet Nam and the Complainant did not publicize the registration of its Vietnamese marks to raise any awareness of these. The Complainant’s Vietnamese trademark protection was registered long after the Respondent’s first use of the term “PetMart” in Viet Nam and after the registration of the Respondent’s own trademark.
6. Discussion and Findings
To succeed regarding the respective disputed domain names, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied for the disputed domain name concerned:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issues – Informal Response and the Complainant’s Supplemental Filing
The Response consists of three emails which do not comply with the requirements of paragraph 5 of the Rules. In particular, the Response lacks the certification of completeness and accuracy required by paragraph 5(c)(viii) and is missing a schedule indexing the Respondent’s evidence required by paragraph 5(c)(ix). The Panel notes however that the Respondent is not legally represented and is prepared to apply a degree of leniency here which would not have been provided if the Response had been prepared by counsel, whom the Panel would expect to be familiar with the terms of both the Policy and the Rules. That said, the Panel will treat any of the Respondent’s evidence or submissions which are not backed by suitable independent sources or sufficient corroborative elements with greater caution than it would have done had the Response complied with paragraph 5(c)(viii) of the Rules.
With regard to the Complainant’s supplemental filing, paragraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Supplemental filings are generally discouraged unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit a supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
The Complainant’s supplemental filing answers new matters raised by the Respondent in its first and second emails, which the Panel believes that the Complainant could not reasonably have anticipated when it filed the Complaint. In these circumstances, the Panel considers that it is reasonable for said supplemental filing to be admitted and considered along with the Complaint and Response, the latter consisting of the Respondent’s three emails taken together. The Panel considers that no prejudice will be suffered by the Respondent in admitting such filing because, first, such supplemental filing was received ahead of the deadline for the filing of the Response, secondly, it is clear from the terms of the Respondent’s third email that it has already taken the opportunity to address the contents of such supplemental filing before the deadline for filing the Response, thirdly, the Respondent has offered no objection to the receipt of such supplemental filing, and fourthly, in all of the circumstances of this case, the Panel can identify no other reason whereby the Respondent might be unfairly disadvantaged by this course of action.
The Panel considers that its decision to admit the Complainant’s supplemental filing on the above basis is consistent with the general principles set out in paragraphs 10 and 12 of the Rules, namely, that the Parties have been treated with equality, each has been provided with a fair opportunity to put its case forward and, likewise, each has taken up such opportunity.
B. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate both that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
In the present case, the Panel finds that the Complainant has UDRP-relevant rights in its various registered trademarks for the word mark PETSMART, such as those described in the factual background section above, held in some cases directly by the Complainant and in others by one of several of its affiliates, which hold certain intellectual property on behalf of the Complainant’s group of companies. Comparing this mark to the disputed domain names, the Panel notes first that this is identical to the second level of each of the disputed domain names but for the absence of the letter “s”, and in the case of the second and third disputed domain names, the addition of geographic terms. The generic Top-Level Domain (“gTLD”) of each of the disputed domain names is typically disregarded under the first element test. In these circumstances, a substantial part of the Complainant’s mark is reproduced as the first and most distinctive element of each of the disputed domain names.
The Respondent has asserted that the disputed domain names are not confusingly similar due to their use of a descriptive phrase (“pet mart”), which it argues has an alternative meaning to the PETSMART mark. This type of assertion is not typically relevant to the assessment of identity or confusing similarity under the first element, given that the test is usually concluded by way of a relatively straightforward side-by-side comparison between the mark and domain name(s) concerned in order to determine whether the mark appears to be substantially recognizable in the latter. Likewise, the fact that there may be evidence of third parties using such an allegedly descriptive term, in domain names or otherwise, is not relevant to the first element analysis. Either or both of these matters may however be relevant to the second and third elements and in the context of this case will be dealt with accordingly below.
In all of these circumstances, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. The first element under the Policy has therefore been established.
C. Rights or Legitimate Interests
Although the Parties have made substantial submissions on the topic of the second element and put forward many pages of documentary evidence, the Panel considers that the issues between them boil down to one principal question. The Respondent has supplied a substantial collection of evidence, albeit presented somewhat haphazardly, which suggests that it is operating a business in Viet Nam trading as “Pet Mart”. This business has been incorporated since May 2014 and, based on the registration date of its <petmart.vn> domain name as identified by the Panel, and supported by submissions from the Respondent, seems to have its pre-incorporation origins in around 2011/2012. The Respondent appears to have built up a network of physical stores in several cities in Viet Nam, based upon its photographs and list of trading addresses. The establishment of this business pre-dates the filing and/or registration of the Complainant’s Vietnamese trademarks by a significant margin. In these circumstances, the Respondent seeks to demonstrate rights or legitimate interests in the disputed domain names in terms of either paragraphs 4(c)(i) or 4(c)(ii) of the Policy, namely that before notice to it of the dispute, it has used a name corresponding with the disputed domain names in connection with a bona fide offering of goods or services and/or has been commonly known by the disputed domain names.
The fact that the Respondent may have demonstrated that it has a correspondingly named and actively trading business is not the end of the matter, however, as the Complainant submits that the reason for the Respondent’s selection of the name “Pet Mart” is based upon its prior awareness of the Complainant’s substantial goodwill in its PETSMART mark and an intent to seek unfair commercial advantage by free riding on this. If that were to be proved on the balance of probabilities, it would defeat the Respondent’s case under paragraphs 4(c)(i) and 4(c)(ii) of the Policy in that no offering of goods and services in a business founded with such knowledge and intent could be described as bona fide, nor could it be said that the Respondent could claim to be commonly known by a domain name which it had adopted in order to free ride on the rights of another.
The central question for the Panel is therefore whether the Respondent genuinely adopted “Pet Mart” as its business name (and then registered the disputed domain names to match at a later date) independently of the Complainant’s rights, or whether its various explanations are pretextual and designed to cover up an intent to take unfair advantage of the Complainant’s reputation and goodwill. The record addresses this question in a variety of ways, setting out the Parties’ contrary positions on a range of topics, namely the alleged descriptive quality or, on the contrary, confusingly similar nature of the Respondent’s business name (and therefore of the disputed domain names), the alleged similarity or substance of any differences in the Parties’ logos, and the alleged fame or lack thereof of the Complainant’s business globally and/or specifically in Viet Nam.
The Panel accepts that the name “Pet Mart” is very similar to PETSMART and that this seems at first glance to be more than coincidental, given that the Parties are in the same line of business. Nevertheless, the Panel cannot deny that the Respondent’s chosen name has a descriptive quality, as the Response implies, meaning a market for pet supplies. While the Complainant seeks to dismiss the examples of third party domain names using this term as irrelevant, they do at least to the Panel’s eyes provide some limited support for the Respondent’s contention that others in the pet trade might also be using “pet” and “mart” in this descriptive way without necessarily intending that the Complainant’s mark be called to mind.
The Respondent’s use of a red/blue divide between the two words in its logo, similar to the color split in the Complainant’s figurative mark and logo, might likewise initially appear to be more than a chance occurrence, and it therefore calls for an explanation from the Respondent. The Panel accepts the Respondent’s contention that many businesses have selected such a red/blue scheme, without abusive intent, and that it is a popular choice for logos. There is, however, still an issue here for the Respondent’s case in that both the color scheme and the location of the color split are similar to those in the Complainant’s logo. The color split occurs after the word “pet” in both examples. The Panel accepts that the color split does not, on its own, prove on balance of probabilities that the Respondent was aware of and seeking to borrow from the Complainant’s mark despite the apparent similarity. The split occurs at a point that would be most natural for any logo comprised of two words, i.e., directly after the first word.
In terms of the alleged similarity in the color palette, the Respondent submits that both of its chosen shades of red and blue are different from those of the Complainant. Although this is sufficiently subtle that it has to be demonstrated by way of a graphic application’s color picker, the Panel notes that there is a difference which the eye can see, mainly in the shades of blue chosen by the Parties. The Respondent explains the background to its own particular choice of shades, namely that these have their origins in an idea of the apparent provisional 1975 flag of Viet Nam (the Panel notes that according to Wikipedia, this relates to the “Provisional Revolutionary Government of the Republic of South Vietnam”).
Based upon the materials presented by the Respondent, which have not been contradicted by the Complainant in its supplemental filing, the Panel can see the similarity between the Respondent’s colors and the alleged provisional 1975 flag. The Panel accepts that there is a difference, however subtle, between these colors and those used in the Complainant’s logo. Whether that difference would be particularly remarkable to the Parties’ respective consumers is a matter which the Panel cannot answer. However, given the Respondent’s repeated assertion that it is a Vietnamese business operating exclusively in its local language for the benefit of Vietnamese customers only, and is not targeted to any of the Complainant’s markets, its selection of colors with an allegedly national origin is not altogether implausible and neither this, nor the positioning of the color split, are conclusive of the issue of alleged prior knowledge and intent one way or the other.
It must be noted that there are additional differences of a less subtle nature between the Parties’ logos which support the Respondent’s contention that it arrived at its logo independently of the Complainant’s mark. The Complainant’s figurative mark and logo is capitalized in its entirety and displayed in a particular stylized typeface with a distinctive “wave” shape in the positioning of its letters, surmounted by a bouncing ball motif. None of these elements are reproduced in the Respondent’s logo, which is in lower case and in a different typeface where the letters are all presented flat on the line.
The Panel also notes that the Complainant argues that the Respondent may not have originally reproduced the entirety of its figurative mark and logo on its website, namely the portion with the cat/dog motif. While the chronology of when the cat/dog motif came up is not clear, this does not, by itself, appear to the Panel to be of major significance in all the circumstances.
On a strict comparison, therefore, the Panel is partially convinced by the Respondent’s protestations that its trading style and name are independent of the Complainant’s name and mark, despite the fact that behind the latter is a very substantial and longstanding business, which is also in the pet supplies trade. Furthermore, the Respondent appears to be on firmer ground when it asserts that the Complainant engages in no apparent trading activity in Viet Nam (other than having filed and registered various trademarks which, while they do pre-date the registration of the disputed domain names to various extents, do not pre-date the Respondent’s selection of its business name or the application for its Vietnamese figurative mark). The record thus appears to be broadly supportive of the Respondent’s insistence that it probably did not select its trading name to benefit from the Complainant’s goodwill; the Panel notes here that this proceeding is not geared towards evidentiary discovery or cross-examination, and the burden (“more likely than not”) falls upon the Complainant.
The Panel regards it as significant that the Respondent puts this matter firmly in issue in its second email, yet no substantive challenge is offered by the Complainant in its supplemental filing. For example, the Complainant does not contest the Respondent’s assertions that the Complainant has no retail stores in Viet Nam and that its website is not available from that location.1 The Complainant does not offer any challenge to the Respondent’s analysis of the untranslated media articles in the Vietnamese press produced with the Complaint, which were intended to support the Complainant’s averment in the Complaint that “The PETSMART Marks have widespread recognition in […] Vietnam”.
The Respondent’s analysis and explanation of the press articles concerned suggests that, while the Complainant is mentioned in each, two of these are mere translations of American and British news stories respectively into Vietnamese, in which the Complainant’s business name appears to feature on a somewhat incidental basis. For completeness, the Panel machine-translated the third article, lest it might shed any greater light on the topic, and found that this is a business news story which describes the twelve most famous retail acquisitions of the decade, including the acquisition by the Complainant of “Chewy.com” in 2017, ranked as number twelve in the article. None of the acquisitions described in this article have any direct relationship with Viet Nam, and the Complainant’s 2017 acquisition of “Chewy.com” post-dates the Respondent’s incorporation to a substantial degree.
As this Panel has observed in previous cases under the Policy, however, the fact that a complainant has no presence in a particular jurisdiction is not necessarily conclusive of the question of a respondent’s knowledge or intent to target it. For example, had the Complainant demonstrated that it operated a substantial globally accessible and multi-lingual web presence, and/or serves customers in Viet Nam; this could potentially have come to the Respondent’s notice, particularly as the Respondent is in the same line of business. Suitable evidence of such could have led to a reasonable inference of knowledge of the Complainant’s rights on the Respondent’s part. There is however, no evidence before the Panel of the Complainant’s online trade with Vietnamese customers or of any significant advertising and promotion of its business in Viet Nam, and the Panel must proceed on the basis of the evidence before it.
The present record provides no evidence that the Complainant’s principal website is receivable from within Viet Nam (the Respondent’s evidence expressly suggests the contrary and, as noted above, its averments to that effect have been left unchallenged by the Complainant). More importantly, there is no evidence before the Panel as to how the fame of the Complainant’s mark stood in Viet Nam at the point when the Respondent’s business was founded in about 2011 or 2012, or when it was incorporated in 2014.
To all intents and purposes, even if its evidence is weighed with caution, the Respondent appears on the balance of probabilities to be operating a business of some substance in Viet Nam which has its own standing pre-dating the filing or registration of the Complainant’s trademarks in that territory. This business – while bearing some similarities – does not directly duplicate the Complainant’s mark or trading style and does not appear to be a sham or a mere pretext for cybersquatting. The Respondent has obtained a registered trademark, albeit figurative in nature. The mark’s disclaimer supports the Respondent’s argument that the term “petmart” is descriptive and not separately protectable. The mark therefore protects the particular device shown in the factual background section above. Photographs of several of the Respondent’s shopfronts show that this figurative mark has been prominently displayed on at least some of its physical retail outlets. It is true that the Respondent did not originally reproduce the entirety of its figurative mark on the website associated with <petmart.info>, as the Complainant points out, but this does not necessarily suggest a manifestly obvious intent to the Panel, particularly given the Panel’s comparison of the Respondent’s logo with the Complainant’s figurative mark as discussed above.
The disputed domain names have evidently been registered in connection with and in furtherance of the Respondent’s business. The first disputed domain name has been developed into a “blog” website about pet care which also promotes various products and provides details of the Respondent’s business. It is in the Vietnamese language, focused on Vietnamese consumers, and does not appear on the evidence before the Panel to be intended to target the Complainant or to confuse the Complainant’s customers. There is insufficient evidence to show that the Respondent selected its name, as reflected in the first disputed domain name, to profit from any anticipated confusion with the Complainant’s business, or its mark or trading style. On the face of the present limited record, therefore, the Panel has difficulty in finding that the Complainant has met its burden under the Policy.
The second and third disputed domain names have apparently been parked by the Respondent on default DNS settings for later use in connection with its business. To the extent that the default DNS setting has caused these disputed domain names to display websites provided by the Registrar in the English language and which offer the domain names concerned for sale, the Respondent would be well-advised to take swift steps to avoid any otherwise unintended confusion by disabling this feature if it has not already done so.
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.
D. Registered and Used in Bad Faith
In light of the above finding, and the failure of the Complaint on the second element, it is not strictly necessary for the Panel to consider the question of registration and use in bad faith. The Panel notes however that in the present case this element of the analysis is in effect closely aligned to that of the second element. In such analysis, the Panel reached the conclusion that the Complainant did not prove on balance of probabilities that the Respondent selected its business name and trade dress with knowledge of and intent to trade off the Complainant’s reputation and goodwill. In these circumstances, had it required to do so, the Panel would likely have reached the conclusion that the Complainant had failed to prove that the disputed domain names were registered and had been used in bad faith. While the Panel does have some hesitation about the Respondent’s arguments and the apparent coincidence between the Parties’ marks, such question is more of a trademark infringement matter, and cannot reasonably on the record before the Panel said to be one of a “clear case of cybersquatting” of the kind which the Policy was intended to address.
The Panel emphasises that the disputed domain names in this administrative proceeding appear to be incidental to a much broader intellectual property dispute between what appear to be two businesses established in different jurisdictions with alleged competing legitimate interests. The written submissions procedure provided under the Policy is not best suited to resolving such a case, where the issues are substantial, complex, and nuanced. The Parties are free to seek other more suitable remedies which may be available to them in various jurisdictions. For example, court proceedings may provide the Parties with an opportunity to conduct a fuller inquiry into the facts and circumstances of this matter with the benefit of discovery procedures, oral testimony, and cross-examination.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: September 29, 2020
1 It is sometimes assumed that all websites are globally available but this is not necessarily the case. Access to a website may be temporarily unavailable or can be blocked at a local or national level by Internet service providers, or by the web hosting company or website operator concerned. “Geo-blocking” can be achieved based upon the geographic location of the requestor’s IP address and certain other data, and is sometimes put in place to segment or restrict markets, or for other policy reasons. The Panel does not know why the Respondent was unable to reach the Complainant’s website in this particular case or whether any “geo-blocking” was involved.