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16 November 2020
One of the United States' largest distributors of pet goods, PetSmart Inc, recently failed in a Uniform Domain Name Dispute Resolution Policy case (D2020-2065) against Vietnam-based pet business Pet Mart Vietnam Co Ltd before the World Intellectual Property Organisation's Arbitration and Mediation Centre.
The case, which concerned the domains 'petmart.info', 'petmartvietnam.com' and 'petmartvn.com', centred on whether the Vietnamese respondents had a legitimate interest in the domains. As the respondents had filed their trademarks in Vietnam before PetSmart, and traded continuously within Vietnam, PetSmart was unable to prove that the respondents were taking unfair advantage of its marks.
Therefore, the panellists concluded that the respondents held legitimate interests in the domains and denied Petsmart's complaint. The case illustrates the fact that despite the similarity between the two companies' marks leading to the potential for PetSmart to claim that the respondents were piggy backing on its international brand recognition, a battle over the domain names was not the most definitive method of resolution with respect to trademark enforcement.
For further information on this topic please contact Ian Mirandah at Mirandah Asia by telephone (+60 322 788 686) or email (email@example.com). The Mirandah Asia website can be accessed at www.mirandah.com.
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