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The Council for Refractive Surgery Quality Assurance (USAEyes) is a nonprofit Lasik patient advocacy that provides objective information about Lasik and similar laser vision correction surgery. USAEyes also evaluates Lasik results through patient surveys and certifies those doctors who meet or exceed the USAEyes Lasik outcome requirements.
An individual attempted to exploit the reputation of the USAEyes.org website by creation of a confusingly similar commercial website at USAEyes.us. A complaint that was administrated by the National Arbitration Forum affirmed that the person had no legitimate rights to the USAEyes.us domain. The finding of the National Arbitration Forum is below.
Visit the official website of the Council for Refractive Surgery Quality Assurance, visit USAEyes.
National Arbitration Forum
DECISION
Council for Refractive
Surgery Quality Assurance, a nonprofit Claim Number: FA0812001237910 PARTIES Complainant is Council for Refractive Surgery Quality Assurance a
nonprofit REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <usaeyes.us>, registered with Godaddy.com,
Inc. PANEL The undersigned, Daniel B. Banks, Jr., certifies that he has acted
independently and impartially and to the best of his knowledge has no known
conflict in serving as Panelist in this proceeding. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on December 10,
2008; the Forum received a hard copy of the Complaint on December 22, 2008. On December 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the domain name <usaeyes.us> is registered with Godaddy.com, Inc. and that Respondent is the
current registrant of the name. Godaddy.com, Inc. has verified that
Respondent is bound by the Godaddy.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the
“Policy”). On December 23, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 12, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”). A timely Response was received and determined to be complete on December 29, 2008. On January 5, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Daniel B. Banks, Jr., as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from
Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant is a non-profit, non-governmental Lasik patient advocacy
providing patient related services including, but not limited to, physician
certification, physician information, patient advocacy, consumer alert, and
dissemination of health related information.
Complainant is commonly known as USAEyes. Complainant has published a website at the domain USAEYES.ORG since
November 1998 and has owned the domain USAEYES.COM since January 2000. Visitors to the USAEYES.COM site are
redirected to the USAEYES.ORG domain. Complainant applied to the U.S. Patent and Trademark Office for
registration of the USAEYES mark on November 9, 2006 and received
registration on October 9, 2007.
Complainant also claims a common law trademark by virtue of continuous
use of the mark since 1998. Complainant’s principal officer is Glenn Hagele who has maintained a
toll-free number at 1-800-USA-EYES since 1984. That phone number was transferred to
Complainant in 1997 and is currently Complainant’s toll-free telephone
number. The USAEYES mark has been used to identify Complainant in news
articles in the Wall Street Journal, New York Times, Washington Post,
National Public Health Radio, U.S. News & World Report, O! The Oprah Magazine and other media. Complainant applied to the HealthOnTheNet
Foundation for accreditation of the USAEYES website in late 2005 with initial
accreditation review beginning July 26, 2006 and full accreditation on July
28, 2007. The disputed domain name is identical and confusingly similar to the
USAEYES trademark and the USAEYES.ORG and USAEYES.COM domains owned and
actively used by Complainant since 1998 and 2000 respectively. Respondent has no rights or legitimate interests in respect of the
domain name. He purchased the
USAEYES.BIZ, USAEYES.INFO and USAEYES.NET domain names in October of 2006 and
began publishing a website at USAEYES.INFO in November 2006. He subsequently caused visitors to
USAEYES.BIZ, USAEYES.NET and USAEYES.US to be redirected to
USAEYES.INFO. Respondent announced the use of Complainant’s trademark and identical
domain as public postings in the alt.lasik-eyes
Usenet newsgroup. He claimed that “The
National Arbitration Forum rejected Glenn Hagele’s demand that he be awarded
the use of USAEyes.us domain name.” That is not true as this is the first and
only arbitration of the USAEYES.US domain.
On December 6, 2007, Complainant filed National Arbitration Forum
(NAF) Uniform Domain Name Dispute Resolution Policy (UDRP) arbitration, case
FA0712001118174 against Respondent Brent Hanson. On February 7, 2008, the panel in that case
found that the USAEYES.BIZ, USAEYES.INFO and USAEYES.NET domains were
identical and/or confusingly similar to Complainant’s mark; that Respondent
has no rights or legitimate interests in the domains; and, that Respondent’s
registration and use was in bad faith.
Accordingly, it was ordered that domains be transferred to
Complainant. On the day those
transfers were completed, Respondent began publishing the same website at
USAEYES.US. Respondent offers no bona fide
goods or services at the disputed domain name; he is not commonly known by
that name; and, he is causing confusion and taking unfair advantage of the
reputation, recognition and good will of the USAEYES trademark. His use is not a legitimate non-commercial
or fair use of the domain name but is a deliberate calculated bad faith
attempt to tarnish the trademark at issue, cause confusion, misdirect
Internet users and take unfair advantage of the USAEYES trade mark of
Complainant. The domain name at issue was registered and is being used in bad
faith. The primary purpose of
Respondent’s use is to harass, defame, threaten, cause
financial harm and to disrupt the function of Complainant. He has a long history of abusive use of
domains in his attempt to cause harm to his targets and confusion in the
public. He has harassed,
cyber-stalked, defamed and invaded the privacy of Complainant’s founder,
Glenn Hagele resulting in litigation by Glenn Hagele against Respondent. He has published the personal identity of
Glenn Hagele, including his Social Security number, driver’s license number,
bank account numbers and credit card numbers.
He purchased the domain GLENNHAGELE.COM in March 2004 and published
derogatory and defaming statements about Glenn Hagele. In November, 2004, Mr. Hagele retrieved the
domain without arbitration. Respondent’s use of the disputed domain name has created confusion
with Complainant’s mark. He has
employed meta tag information including the title “USAEYES-Glenn
Hagele-Executive Director” to confuse Internet users that Glenn Hagele is
affiliated with Respondent’s website.
He has published on his website a list of “Surgeons endorsed by Glenn
Hagele” that included surgeons who have been de-certified by Complainant and
surgeons who have never been certified.
He employed exactly the same techniques of domain abuse and harassment
in Washington CeaseFire
v. Private Registration, NAF claim number
FA0705000985159. Immediately after the
Forum decided to transfer the <washingtonceasefire.com> from
Respondent, he moved the offending website to <washingtonceasefire.net>. There is other litigation brought by Glenn Hagele against Respondent
Brent Hanson for defamation and invasion of privacy. This was filed by Glenn Hagele as an
individual and not on behalf of Complainant and is not relevant to this case. Complainant has filed a small claims case
against Respondent to recover costs associated with the prior NAF arbitration
but such is not relevant to this case. The prior NAF arbitration and subsequent determination to transfer
domains USAEYES.BIZ, USAEYES.INFO and USAEYES.NET from Respondent to
Complainant is virtually identical to this complaint. B. Respondent The Respondent’s submission attacks Complainant and Glenn
Hagele. Respondent has supplied a list
of various actions taken by Complainant which are not relevant to the dispute
which has to be decided in this case.
Accordingly, the Panel disregards the diverse allegations made unless
they are relevant to the matters which have to be decided under the Policy. Respondent claims that the disputed domain name is not identical or
confusingly similar to Complainant’s mark in that it is impossible for
visitors to be confused into thinking they are visiting Complainant’s web
site. The disputed domain is used to
openly criticize Complainant.
Furthermore, the site encourages visitors to visit Complainants
usaeyes.org site for verification of criticisms made. Respondent claims rights and legitimate interests in the disputed
domain name because he is making a legitimate noncommercial or fair use of
the domain name without intent for commercial gain or to tarnish the mark. He claims that the sole purpose of his
website is to provide verifiable, factual information about complainant’s
enterprise. Also, there is a
significant social value in permitting supporters of an organization to
express their support and appreciation as part of their First Amendment
rights. Respondent claims he has not registered the disputed domain name in
bad faith. He has not offered to sell
the domain name but has simply acquired the domain name for the purpose of
educating the public regarding the Complainant’s enterprise. Complainant has no legitimate interest in obtaining USAEYES.US. The National Arbitration Forum (NAF)
previously transferred ownership of that domain name from Respondent to
Complainant who then used the domain name for the sole purpose of publishing
the decision of NAF rather than to promote his enterprise. Based on the history of Complainant, his
sole purpose in obtaining USAYEYES.US is to publish the decision of NAF in
this case. FINDINGS Complainant referenced two court proceedings between Complainant and Respondent that are currently pending. Specifically, Complainant alleges that: (1) an individual action by Complainant’s owner has been filed against Respondent for defamation and invasion of privacy; and (2) a small claims action has been filed by Complainant against Respondent to recover arbitration filing costs in connection with a previous UDRP arbitration. Complainant alleges that neither of these actions has any relevancy with regards to the instant UDRP proceedings. The Panel finds that these court actions do not have any effect on the current case and decides to proceed with the instant arbitration proceeding despite the ongoing legal cases between the two parties. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties respective trademark rights in federal court). Complainant and Respondent make numerous allegations against each other of criminal activity, including fraud and harassment. These arguments will be addressed only to the extent, if any, that they are applicable to the elements analyzed under the UDRP. Some of these arguments may be addressed in the court proceedings between the two parties and may therefore be disregarded by the Panel when deliberating in this case. After consideration of the
matters submitted, the panel finds as follows: 1 – The disputed domain name is identical to the trademark in which
the Complainant has rights 2 – The Respondent has no rights or legitimate interests in respect
of the domain name. 3 – The domain name was registered and is being used in bad faith. DISCUSSION Paragraph 15(a) of 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.” Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights; (2) the Respondent has no rights or legitimate interests in respect
of the domain name; and (3) the domain name has been registered or
is being used in bad faith. Given the similarity between the Uniform Domain Name Dispute
Resolution Policy (“UDRP”) and the usTLD Policy,
the Panel will draw upon UDRP precedent as applicable in rendering its
decision. Identical and/or Confusingly Similar Complainant has rights in the
USAEYES mark by virtue of its trademark registration with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 3,305,471 issued October 9,
2007). The Panel finds that this
trademark registration adequately confers rights in the USAEYES mark to
Complainant pursuant to Policy ¶ 4(a)(i). See Mason Cos., Inc. v. Chan, FA
1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel
also concludes that Complainant’s trademark registration of its mark provides
ample basis to conclude that it has rights in the mark.”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s
registration with the USPTO for the In addition to its trademark
rights, Complainant also has common law rights in the USAEYES mark dating
back to 1998. Complainant has used the
mark since that time to identify its vision correction surgery and eye care
patient advocacy services, physician information, eye health information, and
other health-related information and services. Complainant’s predecessor used the
1-800-USA-EYES toll-free telephone number since 1984, and Complainant
acquired control over this telephone number in 1997. In its Exhibits with the Complaint,
Complainant provides excerpts from the Wall
Street Journal, New York Times, Washington Post, National
Public Radio, US News & World
Report, CNN, and O! Magazine that reference
Complainant’s business. Complainant has
operated the <usaeyes.org> and <usaeyes.com> domain names since
1998 and 2000, respectively, and its website received accreditation from the HealthOnTheNet Foundation on July 28, 2007. Based on this evidence, the Panel concludes
that Complainant has sufficiently established secondary meaning in the
USAEYES mark to confer common law rights in the mark to Complainant dating
back to 1998 pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb.
Forum Dec. 19, 2005) (finding that the complainant established common law
rights in the STELLAR CALL CENTRES mark because the complainant demonstrated
that its mark had acquired secondary meaning); see also George Weston Bakeries Inc.
v. McBroom, FA 933276 (Nat. Arb.
Forum Apr. 25, 2007) (finding that the complainant could establish common law
rights in its GW BAKERIES mark through consistent and continuous use of the
mark, which helped the mark become distinctive and generate “significant
goodwill”). Complainant
contends that the <usaeyes.us> domain
name contains its USAEYES mark in its entirety and merely adds the country-code top-level
domain (“ccTLD”) “.us.” The Panel finds
this addition insignificant under an analysis of the Policy and therefore
concludes that Respondent’s <usaeyes.us>
domain name is identical to Complainant’s USAEYES mark pursuant to Policy ¶
4(a)(i). See Lifetouch, Inc.
v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the
complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails
to distinguish the domain name from the mark pursuant to the Policy”); see also Tropar Mfg. Co. v. TSB, FA 127701
(Nat. Arb. Forum Dec. 4, 2002) (finding that since
the addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us>
domain name is identical to the complainant’s TROPAR mark). Rights or
Legitimate Interests The Respondent is using the <usaeyes.us> domain name to criticize and harass Complainant,
and to tarnish Complainant’s USAEYES mark.
Respondent previously used the <usaeyes.biz>,
<usaeyes.info>, and <usaeyes.net> domain names in a similar
manner, and the UDRP panel in that case found that Respondent lacked rights
and legitimate interests in those domain names. See Council for Refractive Surgery Quality Assurance, a
nonprofit Registration and Use in Bad Faith This panel also adopts the reasoning of the panel in the previous
case regarding bad faith registration and use. Complainant contends
that Respondent’s website resolving from the <usaeyes.us> domain name “has created
confusion with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s web site or location of a service on
Respondent’s website.” Based on this
contention and the evidence in the record, the Panel finds that Respondent
registered and is using the <usaeyes.us>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL
LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb.) Forum July 21, 2006) (finding that the respondent
took advantage of the confusing similarity between the
<theotheraol.com> and <theotheraol.net> domain names and the
complainant’s AOL mark, which indicates bad faith registration and use
pursuant to UDRP ¶ 4(b)(iv)); see also Tower
Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb.
Forum Oct. 16, 2006) (concluding that the respondent registered and was using
the <bromoseltzer.com> domain name in bad faith because it displayed a
logo similar to the complainant’s BROMO SELTZER mark, which was likely to
confuse the public as to the source of the material exhibited at the
respondent’s website). The Panel also finds that
Respondent’s use of the <usaeyes.us> domain name to display a
website criticizing Complainant and its business activities indicates bad
faith registration or use pursuant to Policy ¶ 4(a)(iii). See Diners
Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20,
2003) (“Respondent’s registration and use of a domain name nearly
identical to Complainant’s mark to criticize Complainant’s business practices
is evidence of registration and use of the <diners-club.net> domain
name in bad faith pursuant to [UDRP] ¶ 4(a)(iii).”);
see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent
registered the domain name for the purpose of bringing Internet users
desiring to learn more about Complainant to Respondent's site for the
intended purpose of publishing contrary and critical views of Complainant
thus disrupting the business of Complainant. Registering a domain name
identical with the mark of Complainant, for this purpose, is bad faith.”). DECISION Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <usaeyes.us> domain name be TRANSFERRED from Respondent to Complainant. Daniel B. Banks, Jr., panelist January 19, 2009 |
