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,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andreashoes.net>, registered with Godaddy.com, 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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com. Also on
A timely Response was received and determined to be complete on
An Additional Submission was submitted on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is a Mexican corporation which does extensive business
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
The Respondent registered the disputed domain name on
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
In mid-2008, the Complainant became aware that the Respondent was using
the ANDREA marks in connection with various retail locations in
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
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
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.
The Andreas Shoes name has become known and has been made popular by
the Respondent within the
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
He produced documentation to show that he is legitimately doing
business under the laws of the State of
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
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
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.
The Respondent mentions a company called Andrea Pfister which registered its brand in 1974. He also mentions a domain called <andreashoes.com> owned by a third party.
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 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 <andreashoes.com> cannot
justify the Respondent’s infringing actions.
The owner of that domain name is based in
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.,
[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
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
[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
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.
G. Gervaise Davis
Dated: April 19, 2010
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