EVIDENCE-Victory for the Underdog: The Difficulty of Proving Absence of Rights and Legitimate Intere
29 September 2020
WIPO Case No. D2020-2065
The second element of the UDRP Policy sets out a deceptively tricky task for complainants, as they bear the onus to prove the absence of the Respondent’s rights or legitimate interests in a domain. As we see in PetSmart, Inc. v. Pet Mart, this difficulty can be the undoing of even a large and well-represented complainant.
This case was between the Complainant ‘PetSmart, Inc.’ and the Respondent ‘Pet Mart’ - a.k.a the largest pet supply retailer in the US against a self-represented pet supply retailer in Vietnam.
This case consisted of a number of disputed domains including <petmart.info>, <petmartvietnam.com>, and <petmartvn.com>, all of which were registered by the Respondent in Vietnam.
The Panel was quickly satisfied of the confusing similarity of the disputed domain name with the Complainant’s ‘PetSmart’ trademarks. Thus, the bulk of the Panel’s discussion on this case centred on whether the Respondent had a right or legitimate interest in the domain names.
While the Complainant was able to provide plenty of evidence regarding its own fame and rights, it fell short of being able to convince the Panel of the lack of the Respondent’s own rights.
While the Complainant and Respondent offered similar services and had remarkably similar logos, there were differences that suggested the Respondent had a genuinely different business, in Vietnam , which the Complainant did not have, and the Respondent had a different logo and an apparently genuine and original business. The Complainant did not provide sufficient evidence showing that the Respondent’s business was not genuine and independent. It made a number of assertions that the Respondent must have had knowledge of its business, despite the fact that the Complainant has no apparent customers (or other presence) in Vietnam. The Respondent had a business trading under the ‘Pet Mart’ name predating the Complainant’s trademark registration in Vietnam, and argued that the name was primarily just descriptive of its services.
Taking all this evidence on balance, the Panel could not be satisfied that the Respondent was not offering bona fide pet retail services or that it intended to cause confusion with the Complainant’s business name. The Respondent appeared to the Panel 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. In other words, the Complainant’s evidence did not come up to scratch.
While this case may make intellectual property lawyers’ senses tingle, it is essential to remember that domain dispute arbitration is only one avenue for remedy in the world of intellectual property disputes. This case is therefore helpful to demonstrate the boundaries and limits of the UDRP procedure, compared with traditional litigation. As the Panel says, some of the questions resolved in this case may be decided differently if heard by a court with access to more forensic procedures than a UDRP panel . The Parties were therefore free to pursue other remedies and litigation, and court proceedings offer some benefits unavailable to arbitration - such as a fuller inquiry, including discovery and cross examination.
This is simply a decision with respect to the domain dispute, and leaves a much bigger intellectual property discussion wide open. However, it does show that if you are going to bring a claim under the UDRP , make sure all your evidence is present and that it is good evidence. That is not what the unsuccessful Complainant did.