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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ara Shoes AG v. Asoc. Fab. Calzado y Afines de Zaragoza

Case No. D2006-1091

 

1. The Parties

The Complainant is Ara Shoes AG of Langenfeld, Germany, represented by Gail & Rodl Rechtsanwalte, Germany.

The Respondent is Asoc. Fab. Calzado y Afines de Zaragoza, Zaragoza, Spain, represented by Abril Abogados, Spain.

 

2. The Domain Name and Registrar

The disputed domain name <arashoes.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2006. On August 28, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue.

On August 29, 2006, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2006.

The Response was filed with the Center on October 2, 2006, after the grant of a one-day extension for filing.

The Center appointed Mr. James Bridgeman as the Sole Panelist in this matter on October 12, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant was established in 1949 and since then it has carried on the business of manufacturing shoes. It is the owner of various registrations for the ARA mark including a Spanish registered trademark registered on October 10, 1993. It maintains an Internet presence by its website established at the ccTLD domain name <ara-shoes.de>.

The Respondent is a non-profit organization of shoe manufacturers, created in 1983 and duly registered as Association in the Public Registry of Associations of Zaragoza, Spain in May 27, 1983.

The domain name in dispute was registered by the Respondent on May 22, 1998.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name <arashoes.com> is identical to the trademark ARA SHOES.

The Complainant further submits that the Respondent has no rights or legitimate interests in the domain name that is the subject of this Complaint, that it is not known under the domain name and it does not hold any trademark or service mark similar to the domain name. The Complainant also submits that neither the Respondent nor the services provided by the Respondent are known by a name similar to the domain name.

The Complainant submits that the Respondent is using the domain name as the address for a web page that is a platform for trading in shoes and is therefore not making a legitimate non-commercial or fair use of the domain name.

The Complainant submits that it is a globally well-known and renowned shoe manufacturer and that its brand is well-known to the public.

The Complainant has been in existence since 1949 and claims to have evolved into one of the leading shoe manufacturers in Europe and the world. It also claims to be the leading manufacturer of women’s shoes in Europe. The Complainant now exports to over 75 countries. The Complainant participates in all major trade fairs for shoes in particular the Dьsseldorf Shoe Trade Fair GDS.

The Complainant has been exporting to the Spanish market for over 20 years and its records show that it has been selling shoes in Spain under the ARA brand since 1997.

The Complainant submits that it is inconceivable that the ARA brand and its business label ARA SHOES was not known to the Respondent.

The Respondent has a membership of 41 shoe manufacturers who regularly take part to a substantial extent in the international trade fairs at which the Complainant is present as a participating enterprise. Two of the companies involved with the Respondent were present at the Dьsseldorf Shoe Trade Fair GDS in 1997 when the Complainant had one of the biggest stands at the fair. The Complainant’s stand could not have been overlooked by those participants.

Hence, the Complainant submits that the Respondent was aware or if it was not aware it was grossly negligently in its lack of awareness using the disputed domain name, infringing the Complainant’s registered trademark rights and encroaching on the economic mobility of the Complainant by registering the domain name in dispute.

Moreover, the Respondent’s intentions are further manifested in the fact that the domain name is an identical reproduction of the company name of the Complainant and it was used to promote the sale of goods identical to those sold by the Complainant, namely shoes. Thus it must be assumed that the Respondent intended to exploit the outstanding reputation of the ARA name and mark in order to entice users to its website.

Finally the Complainant submits that there has been an “astonishing geographical and chronological coincidence of the Complainant’s activities”. The registrar with which the domain name is registered is based in Dьsseldorf with 25 kilometres of the seat of the Complainant. Furthermore it is significant that the domain name was registered immediately after the Complainant had significantly expanded its activities in Spain by the formation there of a local distribution company Ara Calzados, S.L. in 1997. The domain name in issue was registered in 1998.

B. Respondent

Firstly the Respondent submits that a number of the claims made by the Complainant have not been proven. Though the Complainant claims that Ara Calzados, S.L. is its distributor in Spain, this is merely an unsupported affirmation and there is no evidence of any linkage between that company and the Complainant.

In any event, the Complainant’s references to ARA CALZADOS, S.L. is not relevant as that company is not the Complainant nor is it the representative of the Complainant in Spain.

The Respondent submits that the Complainant has failed to provide any evidence of the alleged notoriety of the ARA trademark in Spain.

The Complainant expressly recognizes that it has been trading in Spain since only 1997, that was at most one year before domain name was registered. The Complainant submits that one year is a very short period of time in which to acquire any kind of notoriety amongst consumers. The Respondent submits that the notoriety of a trademark among consumers is obtained as a result of time and money. Notoriety of a trademark is a quality that is difficult to achieve and cannot be achieved in one year’s trading activity.

The Respondent comments on the information in the annexes to the Complaint relating to the extent of the Complainant’s trade in Spain. It argues that the documents submitted prove nothing. In particular the official form of inscription before Spanish Tributes and Taxes Agency does not per se show that there has been any trading and the receipt of the I.A.E. tax that was provided does not prove trading activity either since the amount paid is very low (approx. € 7.00).

The Respondent disputes the Complainant’s claim that the domain name is identical to the Complainant’ trademark ARA SHOES. The Complainant’s trademark is ARA. The Spanish registration is a device mark that includes a very depictive device.

Comparing the words ARA and ARASHOES leads to an indisputable conclusion that both signs are different. Addition of term “shoes” gives the term ARA a new and unique quality that allows consumers to perfectly differentiate between one word from another (since ARASHOES is in fact a word).

The Respondent contends that the term “shoes” does not mean anything in Spanish: it is a so – called fantasy word for Spanish consumers. Though the Respondent does not deny its eventual understanding by some kind of consumers, the terms must be analyzed in the view of the average consumer as is required by trademark law.

The Respondent asserts that the test for whether there is confusing similarity is that of how the terms would be perceived by the average consumer. Trademark law allows coexistence of even identical signs as long as both cover different goods or services. And this case is a perfect example of it: while the Complainant’s trademark covers “shoes”, the Respondent’s use of the domain name relates to its activities as a non-profit organization engaged in legal and finance assessment and support and related.

The Complainant’s trademark is also similar to dozens of Spanish trademarks that incorporate the word “ara” some even in international class 25 for shoes. In this regard the Respondent cites the following Spanish trademark registrations as examples of coexistence in class 25: M 1517323 ARABELL class 25 “shoes”; M 1589750 ARA - MAR class 25 “shoes”; M 1605378 ARALIA class 25 “shoes”.

The use of combinations of three letters is common to many fields. The Respondent cites examples of multiple users of three letter marks in particular in the context of references to geographical place names and in this regard the Respondent cites examples of the use of three letters to denominate airports.

As to whether the Respondent has rights or legitimate interests in respect of the domain name, the Respondent submits that, as used by the Respondent, the letters ARA clearly designate the geographical area ARAGON.

The Respondent points out that in Spain, the Internet has been a recent technological advance. It can be considered as a mass phenomenon only in the last four or five years. Before then, the Internet was unknown to most of the people and while in the main the presence of Spanish undertakings on the world wide web was just merely anecdotal there was however some Internet activity. Undertakings, mostly public bodies, started to provide content through the world wide web and even though the Spanish ccTLD was already available, Spanish undertakings relied mainly on the gTLDs, specially the “.com” domain.

And it was at a time when a very low number of people were accessing the Internet that the Respondent decided to register the domain name in issue to promote the Aragon regional shoe industry worldwide through the World Wide Web.

The Respondent contends that is a non-profit organization created in 1983 and duly registered as Association in the Public Registry of Associations of Zaragoza, Spain in May 27, 1983. The Association has been active for more than twenty-three years. Its main objective is to organize, promote and give support to all shoe-manufacturers of the Spanish Community of Aragon and in particular those manufacturers inside the region of Aranda, located inside the Spanish province of Zaragoza.

The letters use ARA refer to the regions of Aragon and Aranda. The Respondent cites numerous trademark for various goods and services incorporating the letters ARA that have been registered by undertakings in the Aragon area.

The Respondent submits that the use of the three letters ARA is commonplace in commerce in Aragon to denote a connection between the Aragon area and goods and services.

The Respondent submits that it has acted in good faith, applying the same logical pattern in choosing a domain name that clearly identifies a connection with Aragon.

The addition of the word “shoes” in the English language was chosen in order to promote the export potential of the site, as English is the most widely used language.

The Respondent asks what better name than <arashoes.com> could have been chosen? It is an easily to remembered domain name for foreign promotion of the goods of its members having an explicit reference to both the geographical location of the Respondent’s members and their products.

The Respondent further submits that as a non-profit organization it does not perform any commercial activity amongst consumers and its activities are legitimate since it only acts as a business mediator. The Respondent does not obtain any earning by these activities and only receives money from public bodies that consider this activity to be of public interest. The Respondent’s web page is an extraordinary way to offer its members a new commerce channel, more powerful than individual site. Its strength lies in the union of all the manufacturers.

The Respondent submits that bona fide non-profit organizations can perform these activities and are entitled to keep a domain name. The Respondent cites the decision of the panel in Avnet, Inc. v. AV-Network, Inc. (WIPO Case No. D2000-0097, April 25, 2000) in support of this argument where the panel stated:

“As a non-profit organization, Respondent has made legitimate fair use without intent to divert consumers or to tarnish the trademark. Complainant has protected its commercial interests in its name by registering <avnet.com> in 1990. Complaint, ¶ 9,B. At that time, Complainant elected not to register <avnet.org>. Respondent registered <avnet.org> in February 1995, and began using the domain name in conjunction with its non-profit IPeXchange network in 1996. Response, ¶¶ 5 and 7. This is evidence of rights to or legitimate interests in the domain name, absent notice of a dispute. Policy, ¶ 4(c)(i). Shelly Harrison v. Coopers Consulting, Inc., ICANN Case No. AF-0121. Complainant failed to object to such use until October 1998, almost 4 years after registration and almost 3 years after the domain name was used to establish a website. Response, ¶ 8. Draw-Tite, Inc. v. Pittsburgh Spring, Inc., ICANN Case No. D2000-0017.”

The Respondent submits that it has made a fair use of the domain name since it was registered on May 22, 1998 having a website with real content always related to the association’s field of activities in the shoe trade.

The Respondent denies that it was ever aware of the existence of or the Complainant’s use of the trademark ARA prior to its reception of this Complaint in September 2006 and therefore the Respondent’s use of the domain name was in good faith as it was not possible for it to know that a conflict could arise.

The Respondent submits that it has been commonly known by the domain name. Since the registration of the domain name the Respondent has been usually identified with the contents of the web page established at the <arashoes.com> address. Its leading role in the Region of Aragon has attracted the Government’s attention to this site as an exceptional business card of a booming sector which is the shoe manufacturing within Aragon.

The Respondent is making a legitimate fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s ARA trademark. The Respondent’s website has never shown any kind of direct or indirect linkage to the ARA trademark and the use of the term ARA has been proved as a legitimate way to identify the origin of products and services from Aragon.

In the event that consumers were to be mislead by a wrongful interpretation of the meaning of the domain name <arashoes.com>, this would automatically be remedied when Internet users note the references to Aragon on the Respondent’s the web page.

Under the Policy, bad faith must be proven by establishing that the Respondent engaged in voluntary acts and that the registration will mislead consumers or achieve significant web traffic by attracting them to the website.

A clear and in the Respondent’s opinion, an indisputable fact that shows an absolute lack of bad faith in Respondent’s activities is the meta tag associated with its web page. This is something easily provable by searching the words “ara shoes” in Google. The first result shown is the Complainant’s web page at the <ara-shoes.de> address. None of the first 100 hundred results of Google show the Respondent’s web or any link to it. On the other hand when a Google search is carried out against the word “arashoes” the first result shown is, obviously, the Respondent’s web page.

The Respondent asks: does the average consumer directly type domain names in web direction bar of the Internet browser? Evidence shows that most of consumers use web searchers such as Google to find the page they are looking for, even if this is the main page of a company or a trademark.

The Respondent submits that it is more plausible that consumers looking for the Complainant will type in the words “ara shoes” rather than “arashoes”.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of the trademark ARA in a number of jurisdictions throughout the world. While the Panel rejects the submission that the domain name is identical to the Complainant’s trademark, it is clearly identical to the Complainant’s name.

The domain name consists of the letters “ara”, letters that are the identical to the Complainant’s ARA trademark and the descriptive English language word “shoes”.

The Panel is satisfied that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

As to whether the Respondent has any rights or legitimate interests in the domain name is a more vexed question. The answer is directly related to the issue of whether the domain name was registered and used in bad faith.

The Respondent has submitted that it chose the combination of the words “ARA”, being a commonplace reference to Aragon and the English language word “shoes”. Given that the Respondent is a membership organization it is perhaps surprising that the Respondent does not point to any minutes of meetings, exchange of correspondence or other documentation relating to discussion among its membership as to the choice of domain name. It is unlikely that such an important decision was reached without any debate.

While the Respondent and its membership has an established connection with both Aragon and shoes, the Respondent has not established that it has any connection with the letters “ARA” standing on their own in any context.

On the other hand the Complainant has established that it has long established rights in and claims long established use of the three-letter ARA trademark in Germany and 75 countries throughout the world.

It would appear from the evidence that the Complainant’s shoes are known as and described by the ARA mark while there is no evidence that the Respondent or any of its members use the letters ARA as a trademark or as a component element of a trademark.

The Respondent has asked is it not more plausible that consumers looking for the Complainant will type in the words “ara shoes” rather than “arashoes”? By the same logic, and without going into the issue of the use of the English language word “shoes” by Spanish organization, is it not more plausible that consumers looking for shoes from Aragon will type in “Aragon” and “shoes” rather than “arashoes”.

The Respondent has submitted that as a non-profit organization it does not engage in commercial activities. This Panel rejects that logic because some of Respondent’s activities have the purpose to promote and support the commercial endeavors of its members.

The Respondent has also argued that as a representative body it has a legitimate interest in the domain name and in support of that assertion it has cited the decision in Avnet Inc. v. AV-Network, Inc. (WIPO Case No. D2000-0097, April 25, 2000). Each case must be taken on its own facts and this Panel notes that in Avnet, the learned Panel held that the representative organization had not intended to divert consumers to its website. For reasons given below, this does not appear to be the case in the present proceeding.

On the balance of probabilities the Complainant has satisfied the Panel that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The answer to the question of whether the domain name was registered and is being used in bad faith must turn on the answer to the question as to whether the Respondent was aware of the Complainant’s trademark and registration when it registered the domain name. The Respondent has denied any such knowledge.

Much of the rhetoric on the part of the Respondent relates to the Complainant’s trademark rights in Spain and its reputation in the Spanish market. The Respondent’s explanation for its decision to use the word “shoes” is however that it sees its website established at the domain name as a “business card” for the export market. The issues in this case are therefore not primarily concerned with Spain and the Spanish market, but relate to the wider export markets where the Complainant has established trademark rights and goodwill in 75 jurisdictions including Spain.

Despite the fact that the Complainant’s registered trademark rights appear to be for a device mark, both of the elements in the domain name i.e., the distinctive word “ara” and the descriptive word “shoes”, appear in the Complainant’s corporate name. The Complainant has an established substantial international reputation in the use of the trademark ARA in respect of shoes.

According to the evidence before the Panel, the Complainant attended and was one of the main exhibitors at the Dьsseldorf Shoe Trade Fair GDS in 1998. In that year some of the members of the Respondent organization also attended the fair and the Respondent registered the domain name.

This Panel is satisfied that on the balance of probabilities the Respondent was aware of the Complainant’s trademarks and its goodwill and reputation in export markets when it registered the domain name.

In reaching this conclusion the Panel is conscious that Respondent chose a registrar based in Dьsseldorf, the city where the Complainant has its seat and that it did not refute the allegation that two of its members visited the Dьsseldorf Shoe Trade Fair GDS in the year that the domain name was registered.

It is also significant that the Respondent registered the domain name in 1998, with the year following the Complainant’s expansion into the Spanish market and its establishment of a distribution company in Spain.

These are factors that indicate that the domain name was initially registered in bad faith.

The Panel, nonetheless, had concerns that the Complainant did not commence these UDRP proceedings until 2006, eight years after the domain name was first registered and six years after the UDRP became available to complainants. This Panel also notes that a delay in bringing UDRP proceedings was a factor in defeating the complainant’s case in Avnet Inc. v. AV-Network, Inc. (WIPO Case No. D2000-0097, April 25, 2000), cited by the Respondent.

The question arises: can use of a domain name that was originally registered in bad faith become use in good faith by the passage of time where as in this case the Complainant has delayed in bringing proceedings under the Policy?

That may be an issue for another forum. In the absence of any express guidance from the Policy, this Panel concludes that given the limited jurisdiction conferred on a panel by the Policy, and in the circumstances of the present proceeding, the delay does not defeat the Complainant’s claim.

In the circumstances, the Panel is of the view that on the balance of probabilities the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor and it follows that the domain name was registered in bad faith.

Having regard to the initial circumstances of registration, the subsequent use of the disputed domain name by the Respondent also appears to this Panel to be in bad faith. The Panel notes in this respect that the disputed domain name, which is confusingly similar to the Complainant's mark, is being used by the Respondent to promote and support the sale of products in apparent competition with those of the Complainant. It must also have been foreseeable to the Respondent that one of the probable consequences of this would be to cause confusion with and to disrupt the business of the Complainant, and that as a result there could be a corresponding benefit to its members through increased sales of their shoe products.

Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name<arashoes.com> be transferred to the Complainant.

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James Bridgeman
Sole Panelist

Dated: October 29, 2006