National Arbitration Forum




Grupo Andrea S.A. de C.V. v. ANDREASHOES

Claim Number: FA1002001307588



Complainant is Grupo Andrea S.A. de C.V. (“Complainant”), represented by Efrain Brito, of Arent Fox LLP, Washington, D.C., USA.  Respondent is ANDREASHOES (“Respondent”), Nevada, USA.



The domain name at issue is <>, registered with, Inc.



The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.


Hon. Sir Ian Barker as Presiding Panelist, G. Gervaise Davis III, Esq., and Terry F. Peppard, Esq. as Panelists.



Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2010.  With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.


On February 14, 2010,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On February 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to  Also on February 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.


A timely Response was received and determined to be complete on March 16, 2010. Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.


An Additional Submission was submitted on March 23, 2010 that was considered not timely and not being in compliance with the Forum’s Supplemental Rule 7.  However, the Panel decided to admit and consider this document, in the exercise of its discretion.


On March 24, 2010, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker, G Gervaise Davis III, Esq., and Terry F. Peppard, Esq. as Panelists.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

The Complainant is a Mexican corporation which does extensive business in both Mexico and the United States selling shoes, clothing and other fashion items by means of catalogue.  The products are sold via catalogue through an extensive network of independent sales agents.  


The Complainant owns several trademarks, service marks and trade names consisting or containing the word ANDREA which are widely used in connection with the sale and advertising of shoes and clothing.  The mark and registration for the mark ANDREA was granted on March 15, 2005 for a filing on March 27, 1998. 


The Complainant also has trademark registrations in Mexico with the Instituto Mexicano de la Propiedad Industrial for trademarks including the word ANDREA.  Since 1974, the ANDREA marks have been used continuously in connection with various goods and services, particularly with the sale and advertising of clothing, shoes and other products and services.


The Respondent registered the disputed domain name on February 22, 2005.  The disputed domain name was registered by a proxy service as agent for Mr. Perdoza.  The principal of the true registrant is a Mr. Perdoza. 


The expression “the Respondent” will from now on refer to Mr. Perdoza, who had been an independent distributor for the Complainant’s products in the United States and as such had been able to purchase the Complainant’s products and, on-sell them to consumers through the Complainant’s catalogues. 


In mid-2008, the Complainant became aware that the Respondent was using the ANDREA marks in connection with various retail locations in Las Vegas, Nevada, as part of the website accessed by the disputed domain name.  After a number of representations and negotiations, in early 2009, the Respondent changed the website whereby the site accessed by the disputed domain name was replaced by one accessed by the domain name <>.  Despite protestation from the Complainant, the Respondent used the disputed domain name to access a <> website from which he sold the Complainant’s products.


On September 11, 2009, outside counsel for the Complainant sent a “cease and desist” letter to the Respondent asserting the Complainant’s rights in the ANDREA marks and requesting the Respondent to cease the use of the disputed domain name and to transfer it to the Complainant.  The original letter was sent via the proxy registration service to Mr. Pedroza.


Mr. Pedroza never complied with the Complainant’s requests and the Complainant thereupon terminated him as one of its independent distributors.  In early 2010, Mr. Pedroza started using the disputed domain name to sell, advertise and promote footwear and clothing made by the Complainant’s competitors.   The website accessed by the disputed domain name is now being used in connection with a commercial website that provides information, links and sales offerings for footwear, clothing and other fashion products.  The Respondent is using the disputed domain name to disseminate information in a manner that creates the impression to visitors to the site that the source of such information and products is the Complainant.  The Complainant alleges that the Respondent is acting in retaliation against it.


The disputed domain name is confusingly similar to the Complainant’s registered marks.  The word “Shoes” in the disputed domain name is merely a generic add-on to the word “ANDREA” which is or is part of the relevant trademarks.  The Complainant also has common law rights in the mark ANDREA which began long before the Respondent registered the disputed domain name.  The likelihood of consumer confusion is enhanced by the Respondent’s use of the disputed domain name to sell the products of the Complainant’s direct competitors.


The Respondent has no legitimate rights or interests in the disputed domain name.  He was given none by the Complainant.  The Respondent does not qualify under Para. 4(c) of the Policy and therefore cannot claim he has been using the disputed domain name in connection with a bona fide offering of goods and services.  To the contrary, he has been capitalizing on the Complainant’s marks and taking unfair advantage of them.


The Respondent registered the disputed domain name in bad faith with constructive notice of the Complainant’s rights in the ANDREA marks, years after they had been widely used by the Complainant in connection with its goods and services sold in Mexico and the United States.  The Respondent has used the disputed domain name to offer for sale products owned by the Complainant’s competitors and to sell its own services which compete directly with the Complainant’s. 


There is ongoing bad faith use in that the Respondent’s use of the disputed domain name will confuse potential customers into thinking that the Complainant is the source of or is associated with or sponsors the Respondent’s website.  Even currently-authorized independent distributors of the Complainant are specifically prohibited from making use of the Complainant’s marks.


B. Respondent

The Andreas Shoes name has become known and has been made popular by the Respondent within the United States and is not identical to the Complainant’s marks.  The Respondent has been commonly known by the disputed domain name even if the Respondent has not acquired trademark rights.  He has been selling the Complainant’s shoes for about six years and has built the market at his own expense at considerable cost.  Linking the website to a domain name and also selling shoes does not constitute acting in bad faith.  All he is trying to do is to save the business that he has built up.  The shoes sold under the disputed domain name are totally different from those of the Complainant.


The Respondent has set out a long narrative of his dealings with the Complainant since September 2003.  He claimed that he had sought authorization to use the word “Andrea” as part of the business name of Andrea Shoes.   He never received a reply to a request letter dated September 15, 2003. 


He produced documentation to show that he is legitimately doing business under the laws of the State of Nevada under the business or fictitious name of “Andrea Shoes”.  He produced a receipt from the Complainant for one of his orders of November 17, 2003.  This was the first price list the Complainant gave the Respondent for the Autumn-Winter 2003/04.  The logo in the price list has the typography used by the Complainant in Mexico.  At that time, the Complainant’s typography was not registered as a trademark in the USA, as is shown by a trademark report.  The Complainant changed its logo as part of a new image for advertising purposes and this was explained in a letter to the Respondent from a former store manager of the Complainant in Chula Vista, California.   


The Respondent detailed an incident in February 2006, when he alleged that representatives of the Complainant wanted him to stop using its logo to advertise the sales of some Andrea shoes until he had filed the required trademark authorization.  He was to fill in a form and send it to Mexico.


The Complainant has been aware of the existence of the disputed domain name since before February 2006, as can be shown from a trademark authorization form dated February 25, 2006. 


After the forms were sent off for the Respondent’s shop, Mr. Delgado of the Complainant provided the Respondent with high resolution pictures of models on a CD that the Respondent was permitted by the Complainant to use for publishing and advertising, including the website and other printed publications.  There was a hard copy of the logo taken from the file which bears the words “Tipografia Autroziada”, meaning authorised typography.


In 2007, the Respondent was approached by representatives of the Complainant complaining that he was printing price lists similar to the Complainant’s and he changed the format.  On June 20, 2007, the Respondent filled another application of trademark authorization with the Complainant.  In September, 2008, after he had received a “cease and desist” letter, he stopped using the Complainant’s logos in any way in advertising and sent a compliance letter on September 4, 2008. 


The Respondent mentions a company called Andrea Pfister which registered its brand in 1974.  He also mentions a domain called <> owned by a third party.


On September 24, 2008, he again tried to obtain authorization from the Complainant for the use of the known brand name “Andrea” but his letter was ignored.


Since 2003, there has been verbal authorization for the use of the Complainant’s brands. 


The Respondent denies confusing customers.  If new customers call, the Respondent advises them that he no longer sells the Complainant’s shoes.  Linking a website to a domain name that sells product different from the Complainant’s shoes is not bad faith.


C. Complainant’s Additional Submissions

The Respondent’s claim that the ANDREA mark became known and popular in the United States due to his actions is incorrect.  The Complainant has been selling its footwear and clothing products under the mark since at least 1974 in both Mexico and the United States.  The Respondent was only one of thousands of distributors who operate under their own names and not the name of Andrea Shoes.


The Complainant provides its independent distributors (including the Respondent when he was one), with marketing materials bearing the Complainant’s marks, including catalogues, posters, price lists, etc to assist the independent distributors to sell the Complainant’s products to consumers.


The Respondent was never authorized to appropriate the Complainant’s federally-registered trademarks.  He claims to have filled out an authorization form for the Mexican market but authorization was never given. 


Third party use of the domain name <> cannot justify the Respondent’s infringing actions.  The owner of that domain name is based in Italy where it uses the mark for soccer shoes which are not marketed in the United States or Mexico.  The company Andrea Pfister no longer commercializes its produces and is no longer using the trademark.


There has never been any contract, implied or otherwise, with the Respondent.  Mr. Pedroza, as well as thousands of other independent distributors, would have completed an affiliation form asking for basic information.  There was no document authorizing his infringing conduct.   The use of a proxy indicates there was never any consent to the disputed domain name on the part of the Complainant and the Respondent intended that his actions in registering the disputed domain name should remain hidden.


The Respondent’s claims are contradicted by the fact that he is selling products and services that compete with the Complainant’s products and services. 




In view of the decision which it has reached, the Panel considers it inappropriate for it to make any findings of fact.



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


From the Panel’s review of the submissions of the parties, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of “cyber-squatting,” defined as the abusive registration and use of Internet domain names. Rather, this is a dispute over the terms and conduct of a business arrangement, which should be confided to the jurisdiction of the appropriate local or national court.  See, for example, Summit Industries, Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001):


[T]he question presented is outside the purview of the UDRP, in that it involves questions of the extent of rights transferred and retained under a stock purchase agreement. Such questions should be determined in an arbitration conducted by agreement of the parties or by a court of law. Accordingly, the Complaint must be dismissed.


See also Nintendo of America Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000):


It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters beyond the narrow purview of the Policy are for the courts of appropriate jurisdictions.


Further see Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007):


[T]he present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty.  Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.


Also, see G.G. Properties Ltd v AA Technologies, D2005-0533 (WIPO August 30, 2005) where a 3-member Panel said:


The aim of the Policy is to stop bad-faith registration of domain names.  The UDRP does not cover trademark infringements.  This UDRP decision is accordingly not intended to prejudice the Complainant if it wishes to file an infringement case under relevant national law.  This case may be a complicated trademark dispute which needs to be determined by national courts under national law with the benefits of full due process and cross-examination of witnesses.  It is not the kind of dispute with clear facts indicating bad faith that the UDRP was designed for.




For the reasons indicated, it is Ordered that the Complaint herein be, and it is hereby, DISMISSED without prejudice to either side.



Hon. Sir Ian Barker, Presiding Panelist

G. Gervaise Davis III, Esq. & Terry F. Peppard, Esq., Panelists
Dated: April 19, 2010


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