Petmed Express v. Medpets.com

Citation: Petmed Express, Inc. v. Medpets.com, Inc., 336 F. Supp. 2d 1213 (S.D. Fla. 2004).

Factual Background
Plaintiff, a leading pet pharmacy, advertised and sold its products through catalogs, television, and its websites at "1888petmeds.com," "petmeds.com," "1800petmeds.com," and "petmedexpress.com." Plaintiff owned the registrations for the marks PETMED EXPRESS, INC. and 1888PETMEDS. Defendant also advertised and sold pet-care products on the Internet through its websites at "medpets.com" and "1888medpets.com." Plaintiff sent a cease-and-desist letter to defendant but defendant continued to use the mark MedPets and the "medpets" domain names.

Trial Court Proceedings
Plaintiff sued for dilution, infringement, unfair competition, and cybersquatting. Defendant failed to answer and the court granted plaintiff's motion for default judgment. Because of its default, the court considered all of plaintiff's allegations as admitted by defendant and found defendant liable on all of plaintiff's claims.

The court also awarded plaintiff statutory damages and attorney’s fees under the Lanham Act. The court first awarded statutory damages for counterfeiting, noting the willful nature of defendant's infringement based on defendant's use of "1888medpets.com" domain even though there was no corresponding phone number, unlike plaintiff's 1-888-PetMeds mark and domain name that did connect to an active phone number.

Defendant also continued to use the infringing marks after receiving plaintiff's demand letter. The court awarded the full $800,000 requested by plaintiff ($400,000 per counterfeit mark), noting defendant's willfulness and the fact that the marks appeared on the Internet and therefore reached a substantial number of customers.

The court next awarded $100,000 ($50,000 per name) in statutory damages under the ACPA. The court decided against awarding the maximum amount of $100,000 per name, distinguishing this case from other cases awarding the maximum amount. Finally, the court awarded attorney’s fees of $16,553.10 and permanently enjoined defendant from using the disputed marks and any confusingly similar marks. The court issued the injunction even though defendant stopped using the domain names after commencement of the litigation because defendant still owned the names and was therefore "free to resume using the marks."

This page uses content from Finnegan’s [[Internet] Trademark Case Summaries]. This entry is available under the GNU Free Documentation License.