I recently had the uninvited opportunity to defend my domain name, metaxa.net, and I am writing this post because it may be useful to others who find themselves in such a position. The good news: You do not need to be a lawyer to do it yourself and the arbitration system works reasonably well. The bad news: You need to do a bit of reading and writing.
I registered and own metaxa.net since 1999. Back then it was essential to own a domain name since, at that time, there were no services to upload and share your photos, no easy ways to have email addresses for you or your family members, and the only clouds around were still up in the sky unable to store any files you may need while away from your office.
As the Web services expanded to cover everything under the sun, the above uses became secondary, and I started utilizing the domain name for other reasons. In 2004 I had started a line of research to discover how Web Spammers succeeded in gaming search engines and place their bogus postings in the top-10 page of relevant search results. Back then it was thought that the “PageRank” algorithm was like “42”: the answer to everything (related to the Web). We now know that search engines can be gamed, and that they spend considerable resources to avoid Web Spam.
[Side note: My research led me to discover the reasons that search engines can be gamed — pretty much for the same reasons we, humans, can be fooled. Web Spammers were using techniques very similar to the propagandistic techniques that politicians, advertisers and financial criminals are using to persuade us to vote for something, buy something or invest in something. I presented my work initially at AIRWeb 2005 (Web Spam, Progaganda and Trust) but if you are interested to read more you should check the journal version (Web Spam, Social Propaganda and the Evolution of Search Engine Rankings).]
Anyway, to implement a technique of discovering Web Spam sites I needed a method to evaluate similarity between Web site contents. It helped to have a Web site containing text that is unbiased towards a particular theme or product. Since there was nothing available online, I uploaded onto my own site a large collection of Associated Press news that were used by the TREC community. If you visited the top directory of metaxa.net you would be surprised to find huge files containing old news. But it was very unlikely that you would visit it. I did not include metaxa.net in any search engine listing, so it would never appear in your search results. Though I never planned to use metaxa.net as text repository, over the years it proved very useful. Many of my students used it to run their research projects, and after graduation some of them ended up working at Microsoft Bing and Google Search, fighting Web Spam on a regular basis.
I continued to own the domain name paying the fees on time, so it was a complete surprise when I received a letter in early April about a dispute filed with the World Intellectual Property Organization (WIPO) by Remy-Cointreau Luxemburg, the well known liqueur producing company. They wanted to take over my domain name! Remy-Cointreau had bought a well-known Greek Spirits company, METAXA, and over the years they had started buying every domain name that contained the string “metaxa” (including “metaxaswineestate”!) Given my research, I knew exactly why they were doing that: They wanted to “persuade” the search engines that any search of the term “metaxa” should lead to their official site only! They knew how to fool PageRank and were doing it legally too. Now they wanted to fool WIPO’s arbitrators. In fact, as they claimed in the Complaint they served me,
“Indeed, the term METAXA® is only known in relation to the Complainant. It has no meaning whatsoever in English or in any other language. A Google search on the term METAXA® displays several results, all of them being related to the Complainant“
Wow. Three lies in three sentences. Anyone who knows just a bit of modern Greek history or checks Wikipedia knows that the name Metaxas is not that rare. (In Greek, the female version of a name, or a reference to the family name itself, does not include the final “s”.) One can Google translate metaxa to see that it means “raw silk” and “silk trader” in Greek, depending on the intonation. And the first page of Google search results does not constitute a proof of unique association. (Yet, even their own submitted screenshot included other METAXA references!) And these were not the only “inaccurate claims” or logical fallacies in the Complaint. There were about a dozen of them. You can see a more detailed list (though not exhaustive) in my Response to their Complaint.
I was doubly stunned. Using such claims were ridiculing the WIPO, the body that they were asking to support them. How can they be so arrogant insulting WIPO’s arbitrators’ intelligence? Wouldn’t they expect that the Responder would point out their lies?
Probably not. My guess is that they expected that nobody would respond to their Complaint and they would win an uncontested case. You see, when a couple years ago we changed the domain record hosting company, the WHOIS information was not updated correctly, and it showed that the administrator was to be reached at … nocontactsfound at secureserver.net. Seems reasonable to expect that whoever owned the domain would not be reached, and so they could snatch it without contest. It would cost them a few thousand dollars, but for a company with deep pockets, that would not be a problem.
Unfortunately for them, due to a billing inquiry, I did get informed. Legalese never being part of my tongues, I turned to the wonderful Berkman community for advice. And the advice poured in immediately. Several Berkmanites, and primarily Prof. Jacques de Werra of the University of Geneva and Faculty Associate at the Berkman Center this academic year, suggested literature, gave me references to other relevant cases, recommended experts in the field, offered advice on my options. They even pointed out to other unfair activities that the company was involved in the past. In particular, a song written for the company’s ad campaign was stolen from Berkmanite musician Erin McKeown – you can read all about it at TechDirt Case study A Perspective On The Complexities Of Copyright And Creativity From A Victim Of Infringement.
Onto the technical part. It turns out that one can defeat a Complaint by convincing the arbitrators that any of these elements are not present:
- your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- you have no rights or legitimate interests in respect of the domain name; and
- your domain name has been registered and is being used in bad faith.
In my case, the first element could not be countered: There were good reasons why my domain name was identical to theirs. But I could convince the arbitrators that the Complaint was wrong for both the second and the third element. That I have legitimate rights, was straight forward: I had to just point out the lies within their claims. But you need to provide a complete counter argument. It is not enough to point out a lie and expect that the arbitrators will go looking for its validity. You have to provide it yourself. With screenshots, excerpts, clear arguments. And you better be exhaustive in your arguments because you may only get one shot. For example, even though I was quite sure that I could nullify the second element, I should better also nullify the third one, just in case. For the third element, I had to go digging for references and receipts showing that I was always the owner of the account and had used it in good faith. Showing “good faith” was important, as this is a main reason why UDRPs exist: to curb the efforts of cyber-squatters who buy domain names only to sell them to the higher bidder of competing companies.
While I was at it, I wanted to point out that the Complaint itself was not filed in good faith. Remy-Cointreau really did not really have a case. Only through the dozen of lies in the filing they could put a case together. I would love to get the arbitrators acknowledge the Company’s filing with bad faith. There are no penalties associated with such an acknowledgement, but future arbitrators may take it into account in the future.
At the end the arbitrators denied the Remy Cointreau – Metaxa Complaint, stopping at the fact that the second element was not proven by the company. In addition to the company losing a case and a few thousand dollars, they lost the opportunity of persuading search engines about the unique association of their trademark. Now that this is an officially recorded WIPO UDRP case, it may help reducing the number of future frivolous Complaints.