WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Remy Cointreau Luxembourg S.A. v. Panagiotis Metaxas and Tetnet Internet Promotions Inc.
Case No. D2014-0535
1. The Parties
The Complainant is Remy Cointreau Luxembourg S.A. of Luxembourg, represented by Nameshield, France.
The Respondents are Panagiotis Metaxas, Massachusetts, United States of America ("USA") and Tetnet Internet Promotions Inc., ("Tetnet"), Toronto, Canada.
2. The Domain Name and Registrar
The disputed domain name <metaxa.net> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2014. On April 2, 2014, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 3, 2014, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming Ttenet Internet Promotions Inc., as being listed as the registrant and providing contact details.
On April 8, 2014, and April 9, 2014, the Center received email communications from Panagiotis Metaxas acknowledging having received notification of the Complaint from GoDaddy.com, LLC, and providing his email address, professional location and telephone number.
Panagiotis Metaxas has accepted service of the Complaint and has made all replies. Accordingly it will be appropriate hereafter for Panagiotis Metaxas to be referred to as the Respondent unless stated otherwise.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. The Response was filed with the Center on April 28, 2014.
On April 29, 2014, the Complainant requested termination of the proceedings. The Notification of Termination was notified to the Parties on May 1, 2014.
On May 2, 2014, the Respondent sent an email communication expressing his objection to the Termination.
On May 9, 2014, the Center informed the Parties that the Notification of Termination should be disregarded owing to the lack of agreement between the Parties.
On May 12, 2014, the Center received a procedural enquiry by email from the Complainant.
The Center received Supplemental Filings from the Complainant on May 14, 2014 and May 15, 2014 and from the Respondent on May 15, 2014 and May 16, 2014. The Center informed the Complainant and the Respondent that the Panel would have discretion whether or not to admit the Supplemental Filings.
The Center appointed Clive N.A. Trotman, Marie-Emmanuelle Haas and Pierre Olivier Kobel as panelists in this matter on June 6, 2014. The Panel finds that it was properly constituted. Each member of 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
According to the Complainant it is the proprietor of a Greek distilled spirit named Metaxa after its creation by Spyros Metaxa in 1888. The product is sold internationally.
The Complaint is the owner of registered trademarks for METAXA, including the following:
- International Trademark number 466654 METAXA registered February 18, 1982 for classes 32, 33;
- Community Trademark number 11088796 METAXA, registered January 24, 2013 for classes 16, 20, 21, 25, 35, 41, 43;
- Canadian Trademark number C418757 METAXA, registered October 29, 1993,for alcoholic beverages, especially liquor and brandy.
The Complainant also holds the domain name <metaxa.com> (registered in 1995) and a number of other domain names including <metaxa.info>, <metaxa.org>, <metaxa.asia>, <metaxa.eu>, <metaxa.ca>, <metaxa.de>, <metaxa.es>, <metaxa.fr>, <metaxa.us>, <metaxa.co.in>, <metaxa.at>, <metaxa.ru> and <metaxa.com.au>.
According to the Respondent, he is Dr. Panagiotis Metaxas, a Professor of Computer Science at Wellesley College, Massachusetts, USA and an Affiliate of the Center for Research on Computation and Society at Harvard University, Cambridge, Massachusetts, USA. He is an expert in research related to information retrieval, web searching, and social network analysis.
The disputed domain name <metaxa.net> was registered on December 15, 1999 and has been used at times for the deposition of the Respondent's family photographs and history, to host technical text for the purposes of student research related to the Respondent's academic interests, and as an email address for the Respondent's family members.
5. Parties' Contentions
The Complainant's contentions include the following:
The Complainant contends that it has rights in the registered trademarks for METAXA listed above and has produced copies of the relevant trademark registry online documentation.
The Complainant contends that the disputed domain name is in effect identical or confusingly similar to the Complainant's trademark. It is contended that the term METAXA is known only in relation to the Complainant and has no meaning in English or in any other language.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no affiliation with the Complainant, has not been authorized to use the trademark and has no legitimate interest in the disputed domain name.
The Complainant refers to Tetnet Internet Promotions Inc., (which had initially been designated registrant organization and mis-spelt Ttenet on the WhoIs) and says that it is not commonly known under the denomination "metaxa". The Complainant says that Tetnet's physical address as stated on the WhoIs does not exist but that Tetnet is the owner or manager of many domain names related to Greece; a list of these was annexed.
The Complainant contends that the website to which the disputed domain name resolves has been inactive since 2010. The Respondent has not made a legitimate use of it but its holding has prevented the Complainant from holding or using it. The disputed domain name is not used in connection with a bona fide offering of goods or services and had been "under construction" until 2004, when it displayed extracts of academic material written by another person.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name uses the Complainant's trademark for the purpose of misleading and diverting Internet traffic. Given his knowledge of Greece, the Respondent must have been aware of the Complainant's trademark when registering the disputed domain name. The disputed domain name does not appear to have been used for any commercial or noncommercial purpose. It is contended that, according to precedent, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.
The Complainant has produced a copy of a cease and desist letter dated March 4, 2014 which was addressed to Ttenet Internet Promotions Inc., and sent to the address shown on the WhoIs for the disputed domain name. No reply was received.
The Complainant has referenced a number of previous decisions under the Policy that the Panel is invited to consider as possible precedent.
In its initial Complaint, the Complainant requested the transfer to itself of the disputed domain name.
The Respondent denies the Complaint. His contentions include the following.
It is conceded that the disputed domain name is similar to the trademark of the Complainant.
The Respondent presents a comprehensive outline of the history of the Metaxa (in Greek, "Μεταξα") family dating back to 1081. A Greek book titled (in translation) "History of the Metaxa family from 1081 until 1864", dated 1893, is produced in the form of a copy of the title page and a reference to the other pages as being accessible on the Respondent's own website at "www.metaxa.net/History-of-Metaxa-Family/book.html". The Respondent has also produced a copy of page 56 of "Livre d'Or de la Noblesse Ionienne, Vol. II. Cephalonie", in French, which he says is the first page of the entry describing the Metaxa family. He says that "Metaxas" is the masculine form and "Metaxa" is the feminine form of the family name.
The Respondent states that the Complainant's company was established in 1888 by Spyros Metaxas, who was not related to the Respondent's family.
The Respondent contends that the name "Metaxa" is not rare or without meaning in Greek. A Google search for Metaxa returned 500,000 results, including on the first page, Metaxa Hotel in Zakynthos, Greece. When conducted in Greek, the search returns are almost all unrelated to the Complainant.
The Respondent contends that he has a legitimate interest in the disputed domain name because he is commonly known by the disputed domain name and has made legitimate noncommercial use of it without intent for commercial gain to divert consumers misleadingly or to tarnish the Complainant's trademark. He registered the disputed domain name with Network Solutions on December 15, 1999 and has owned it continuously since. He bought a web hosting package from Tetnet Internet Promotions Inc., a Canadian Company, Registration Number 89176 5091 RC0001. Tetnet remains the manager, not the owner of the disputed domain name, but the registration has been transferred successively to: Tetnet's account with BulkRegister.com (December 4, 2001); Tucows (Netfirms) (October 10, 2010); and Godaddy.com (March 29, 2011). The Respondent opted for a Domain Privacy service with Netfirms.
The Respondent contends that the Complainant retrieved WhoIs information on March 11, 2014 that listed the manager, not the owner of the disputed domain name. Furthermore the manager's name Tetnet was mis-spelt Ttenet on the WhoIs and the address was incorrect. The Respondent submits in evidence a copy of a letter from Tetnet dated April 14, 2014, addressed to "Dear WIPO officer" and referencing the present dispute. The letter relates the Respondent's long relationship with Tetnet and the change of registrar to GoDaddy, which was done by the Respondent. The letter explains that the process of transfer of registrant details propagated inaccurate information that remained uncorrected, and that Tetnet changed its address and did not receive mail about the domain name being in dispute.
The Respondent submits a copy of a receipt dated March 29, 2011 from GoDaddy, recording the transfer of the disputed domain name, addressed "Dear Panagiotis Metaxas"; and a receipt dated November 17, 2013, from Go Daddy, confirming renewal of the disputed domain name for 5 years, naming Panagiotis Metaxas.
The Respondent says his use of the disputed domain name since 2000 was initially to host family pictures, to enable family members to have email addresses "[…]@metaxa.net", and to host a copy of the Metaxa family history book. He has assigned the index.html page of the corresponding website to a research resource made available by Reuters and designated by Reuters to be "for research purposes only". The Respondent says the resource enables the computation of content similarity between top-level contents of websites. The Respondent's academic research concerning the recognition of spammers has been productive of research papers, theses, conference presentations and awards, and a copy of part of his curriculum vitae is produced in evidence.
The Respondent contends that because the disputed domain name was essentially personal, it was never submitted for indexing to search engines and has very low visibility.
The Respondent further contends that the disputed domain name was not registered in bad faith and is not being used in bad faith. He says that the Complainant's enquiries of the Wayback Machine ("www.archive.org") were inadequate for their evident failure to look into subdirectories or to recognise the unrepresentative nature of the Wayback Machine.
The Respondent says he did not receive a cease and desist letter that the Complainant claims was "well-received". It had been sent to the email address "[…]@secureserver.net" because of an error in the registration information, and its non-delivery ought to have been predictable to the Complainant.
The Respondent contends that the disputed domain name has never been intended for the purpose of selling, renting or transferring to the Complainant or to anyone else; or to disrupt the Complainant's business; or to attract, for commercial gain, Internet users to the Respondent's website.
The Respondent says that between 1995 and 1999, the Complainant made no effort to register the disputed domain name, indicating that the Complainant had no interest in it at that time and did not contest the registration for 15 years.
C. Respondent's and Complainant's Supplemental Filings
In an exchange of emails on May 15, 2014, copied to the Center, the Respondent contended the Complainant had acted in bad faith and that the Panel should decide the matter. In reply, the Complainant denied bad faith and cited, inter alia, the inability to trace the owner of the disputed domain name, and said that had the Respondent's family name not been Metaxas, the registration could have been considered as passive holding. The Complainant renewed its request for the Respondent's agreement to a termination of the proceeding.
The Respondent replied on May 16, 2014, requesting that the dispute be decided by the Panel.
6. Discussion and Findings
A. Procedural Matters
Identity of the Respondent
The WhoIs information for the disputed domain name had the registrant name left blank, and named the registrant organization as Ttenet Internet Promotions Inc. It has emerged that Ttenet Internet Promotions Inc., was a mis-spelling of Tetnet Internet Promotions Inc., that the address was recorded incorrectly, and that this entity was not the disputed domain name owner but the domain management company that had acted on behalf of Panagiotis Metaxas since the creation of the disputed domain name.
The transfer of the registration to GoDaddy.com, LLC as registrar was done by Panagiotis Metaxas. Paragraph 2 of the Policy imposes ongoing obligations upon the registrant including the following:
"Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (...)"
Responsibility for failure to check registration information and for failure to receive any communications intended for the registrant must rest ultimately with the Respondent in this case. As the Hon. Sir Ian Barker QC wrote in the decision in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:
"[the Center] goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent's address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance".
After Panagiotis Metaxas received notification of the Complaint from GoDaddy.com, LLC, and before receiving the Notification of Complaint from the Center, he contacted the Center and provided his email and other contact details in the role of Respondent.
Paragraph 1 of the Rules defines a respondent as "the holder of a domain-name registration against which a complaint is initiated". The Center recognises, however, that this may differ in cases including privacy or proxy registration services, or subject to any specific determination that may be made by a UDRP panel or party. Having regard to the practicalities including the accuracy of the record, the Panel will treat Panagiotis Metaxas as the first-named Respondent. Tetnet, having been nominated by both Parties as a Respondent, will be included in the intituling. It will be realistic to refer to the Respondent, being effectively Panagiotis Metaxas, in the singular. For the avoidance of doubt, the Panel will make no finding in respect of Tetnet Internet Promotions Inc.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either Party. In the circumstances, the Supplemental Communications from the Complainant and the Respondent will be admitted.
Complainant's Request for Termination of the Proceeding
The Complainant, having received the Response, wrote to the Center on April 29, 2014, asking for the Proceeding to be terminated.
Paragraph 17 of the Rules governs termination of a proceeding in the following terms:
(a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.
(b) If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.
In the terms of paragraph 17(a) of the Rules, it is clear from the Respondent's Supplemental Communications that the Parties have not agreed on a settlement.
Given the Complainant's request for a termination, it might be arguable in the terms of paragraph 17(b) of the Rules as to whether it is unnecessary to continue the proceeding. In view of the Respondent's clear desire for the Panel to render a definitive resolution of the dispute, the Panel has not found it unnecessary or impossible to continue and has not made a proposal for termination to which a Party may raise a justifiable objection.
Paragraph 15(a) of the Rules states:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
There is no provision under the Policy or Rules for a summary or default decision. The Panel will proceed and decide the dispute on the basis of the Complaint, the Response and the Supplemental Filings.
B. Identical or Confusingly Similar
Within the meaning of paragraph 4(a)(i) of the Policy, the Panel finds the disputed domain name <metaxa.net> to be identical to the Complainant's registered trademark METAXA.
C. Rights or Legitimate Interests
The onus of proof is upon the Complainant to show that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has asserted prima facie that it has not permitted or licensed the Respondent to use the Complainant's trademark.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the terms of paragraph 4(c)(ii), the Respondent has produced evidence and made submissions to the effect that he as an individual is commonly known by the surname Metaxas. He has produced a copy of the front page of a book dated 1893 that is the history of the Metaxa family, with that spelling, and states that it is the history of the family to which he belongs. He has also produced the reference to the Metaxa family in the book "Livre d'Or de la Noblesse Ionienne, Vol. II. Cephalonie", headed with a family crest and "Metaxa - Notice Historique". He says that Metaxas is the masculine form and Metaxa is the feminine form of the family name and that members of his family have email addresses "[…]@metaxa.net", including himself.
In the terms of paragraph 4(c)(iii) of the Policy, such use as the Respondent has made of the disputed
domain name has been for the deposition of family photographs and historical information about the Metaxa family, and for the deposition of a standardized data resource for use by the Respondent's research students and others for the study of information retrieval. There is no evidence that these uses have been other than noncommercial and fair.
After having received and considered the Response, the Complainant wrote to the Center on April 29, 2014 and moved as follows:
"I hereby request the termination of the proceedings related to the domain name <metaxa.net>. The Respondent has provided evidences of his legitimate interests and good faith in respect with the domain name <metaxa.net>."
On May 14, 2014, the Complainant in an email to the Respondent stated, inter alia:
"Following the filing of the complaint, you have provided us with information of proving legitimacy to that domain name. For this reason, we felt it was useless to continue this process and have sent our response to the Arbitration Centre."
The Panel's findings in respect of paragraph 4(a)(ii) of the Policy are not at variance with the Complainant's motion to terminate the proceeding. The Panel formally records its finding that the Complainant has not succeeded in proving in the terms of paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is not essential to proceed to a consideration of possible registration or use of the disputed domain name by the Respondent in bad faith, and in the particular circumstances of this case, the Panel will not do so.
For all the foregoing reasons, the Complaint is denied.
Clive N.A. Trotman
Pierre Olivier Kobel
Date: June 17, 2014