Council for Refractive
Surgery Quality Assurance, a nonprofit
Claim Number: FA0712001118174
Complainant is Council for Refractive Surgery Quality
Assurance, a nonprofit California corporation (USAEyes) (“Complainant”), represented by Glenn
Hagele, 8543 Everglade Dr., Sacramento, CA 95826-3616. Respondent is Brent Hanson (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usaeyes.info>, <usaeyes.net>, and <usaeyes.biz>, registered with Tucows Inc.
The undersigned 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.
The Hon. Sir Ian Barker, QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On December 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 17, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant is a non-profit Californian corporation and its
principal officer is Mr. Glenn Hagele.
The Complainant applied to the United States Patent & Trademark
Office for registration of the standard character mark USAEYES on
The Complainant asserts that it has used the mark USAEYES since 1998 to identify its vision correction, surgery, eye-care, and patient advocacy services, as well as for physician information, eye-health information, consumer alerts, surgeon certification services, and the dissemination of health-related information.
The Complainant has owned and actively used the domain names <usaeyes.org> and <usaeyes.com> since 1998 and January 2000, respectively.
Mr. Hagele has maintained a toll-free number at 1800-USA-EYES. The mark has been used to identify the
Complainant in news articles in various nationwide publications, including the
Wall Street Journal, New York Times, and the Washington Post. The Complainant received accreditation from
Health on the Net Foundation on
The disputed domain names, which were acquired by the Respondent in October 2006, are identical and/or confusingly similar to the Complainant’s registered trademark and common law mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. He was given none by the Complainant.
The Respondent began publishing a website at <usaeyes.info> in November 2006. Visitors to <usaeyes.biz> and <usaeyes.net> are redirected to <usaeyes.info>. The Respondent has used the Complainant’s mark in various postings on Internet newsgroups and forums.
The Respondent announced the use of the Complainant’s trademark and identical domain as public postings in the ALT Lasik-Eyes Newsnet Newsbrief which Mr. Hagele frequents in regard to patient information services provided by the Complainant. The Respondent subsequently created more than 100 postings in this news group using the Complainant’s mark and identical domain.
The Respondent offers no bona fide services or goods with his use of the disputed domain names. He has never been known as USAEYES.
The Respondent’s use of the disputed domain names is a “negative commercial use” in that he may not seek direct financial gain from the use of the disputed domain names, but seeks financial loss to be caused to the Complainant and its employees and associates.
The Respondent’s use causes confusion and takes unfair advantage of the reputation, recognition and goodwill of the Complainant’s mark. In other words, the Respondent’s use of the Complainant’s trademark is not a legitimate non-commercial or fair use of the disputed domain names, but is a deliberate and calculated bad faith attempt to tarnish the trademark, cause confusion, and misdirect internet users to the Respondent’s websites. It takes unfair advantage of the reputation, recognition and goodwill of the Complainant’s mark.
The disputed domain names were registered and are being used in bad faith. The Respondent wishes to disrupt, harass, and defame the Complainant and Mr. Hagele and his supporters. He has a long history of abusive use of domain names and of attempts to cause confusion to the public.
The Respondent has harassed, defamed, and cyberstalked Mr. Hagele, resulting in litigation in the California Superior Court. The Respondent publishes on websites the personal identity of Mr. Hagele and personal information concerning him. He purchased the domain <glennhagele.com> in March 2004 and used to publish derogatory and defamatory statements about Mr. Hagele.
The Respondent’s website causes confusion with the Complainant’s mark as to the source, sponsorship or affiliation or endorsement of his website, e.g.:
1. The Respondent has employed Metatag information, including the title “USA Eyes-Glenn Hagele – Executive Director” to confuse internet users that Mr. Hagele is affiliated with the Respondent’s website and it causes the website to appear in search engine results which he terms relevant to the Complainant.
2. The function of the Complainant is to evaluate vision correction (lasik) surgeons and patient outcomes, measuring certification of those doctors who meet or exceed the Complainant’s outcome requirements.
The Respondent has published on his website, a list of “surgeons endorsed by Glenn Hagele.” That includes surgeons who have been de-certified by the Complainant and those who have never been certified by it.
The Respondent employed the same techniques of domain abuse and harassment in an NAF case in Washington Ceasefire v. Private Reg., FA 985159 (Nat. Arb. Forum June 27, 2007).
The Respondent attacks the Complainant, Mr. Hagele. He claims that he is not a patient advocate but that he has conducted a campaign of harassment of lasik patients who have published stories about their negative surgical outcomes.
The Respondent has supplied a list of various actions allegedly taken by the Complainant, including registering domain names and threatening to publish social security numbers and other personal information of named individuals. These allegations are irrelevant to the dispute which has to be decided. Accordingly, the Panel disregards the diverse allegations and counter-allegations made in the pleadings unless they are directly relevant to the matters which have to be decided under the Policy.
The Respondent claims that the Complainant’s registered trademark can never be established as a service mark. It is impossible for visitors to the disputed domain name websites to be confused into thinking they are visiting the Complainant’s website because it is immediately obvious that the site is designed openly to criticize the Complainant, as the banner on the page has a text “USAEYES EXPOSED.”
The Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain, misleadingly to divert consumers, or to tarnish the trademark or service mark at issue. Criticism of a trade mark owner’s activity is a fair use, even if the disputed domain name incorporates the Complainant’s trademark. The Respondent cited numerous NAF and WIPO cases. The Respondent is not a commercial enterprise. The sole purpose of his website is to provide variable factual information about the Complainant’s advertising agency and the surgeons who pay for advertising services provided by the Complainant. Although the information on the Respondent’s website should be embarrassing to the Complainant and its lasik surgeons, the Complainant has not provided any evidence to support his allegation that it is defamatory. The Respondent’s claims about the Complainant are confirmed by various surgeons. The free speech rights of the Respondent override the commercial value of a domain name.
The Respondent has not registered the disputed domain names in bad faith because:
has already rejected complaints about the Respondent publishing public
documents containing Complainant’s private information. On December 21, 2007, a
2. The Respondent has not offered to sell the disputed domain names, nor does he intend to sell them. He simply acquired them for the purpose of educating the public on the false advertising in which the Complainant engages.
3. A consensus has not yet developed amongst panelists under the Policy regarding whether an individual would have a legitimate interest in using a domain name for the purposes of criticizing or commenting on a trademark owner. Some panel decisions find no legitimate interest in using a domain name incorporating a trademark for the purpose of criticizing or commenting on the trademark owner. These relate to a trademark owner that is a commercial enterprise, whereas the Complainant claims to offer a not-for-profit service.
Both the Respondent and Complainant claim to offer a non-profit service so there is no intent to divert any commerce or to misdirect donations. The Respondent has neither sought nor received commercial gain from the registration and use of the disputed domain names.
In Legal & General Group Plc v. Image Plus, D2002-1019 (WIPO Jan. 10. 2003), the panel held that the “initial interest/confusion” was displaced by the criticism: a low level of confusion is a price worth paying to preserve the free exchange of ideas on the Internet. Similarly, in Elm Grove Dodge Chrysler Jeep, Inc. v. Schedule Star, FA 352423 (Dec. 27, 2003), the panel found no bad faith registration or use where the Respondent had only registered the disputed domain names to voice concerns and complaints about the complainant, and nobody reading the site would be confused as to sponsorship.
4. The Complainant has presented a “bizarre and baseless claim” that the Respondent has employed the same techniques as shown in the Washington Ceasefire case.
and the Respondent are both activists or lobbyists in the area of evaluating
eye surgeons and eye surgery techniques.
The founder of the Complainant, Mr. Hagele, and the Respondent have been
involved in litigation in
The Panel takes no notice of the various allegations and counter-allegations by one party against the other which do not have any relevance to this limited dispute. The Complainant does have a registration for the trademark USAEYES and has established common law rights prior to that registration by showing a secondary meaning attaching to the mark. Accordingly, the disputed domain names are identical to the trademark in which the Complainant has rights.
The Respondent knowingly used the Complainant’s mark to register and use the disputed domain names for what he describes as “a site for free speech on the issue in which the parties show an interest.”
The Respondent has not demonstrated that he comes within ¶ 4(c) of the Policy.
The Respondent registered and uses the disputed domain names in bad faith.
The Complainant, therefore, has succeeded and the disputed domain names are to be transferred from the Respondent to the Complainant.
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.”
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 and is being used in bad faith.
Although the registration date and the application filing date of the Complainant’s trademark registration for USAEYES do not predate the Respondent’s registrations of the disputed domain names, the Complainant is not required to own a trademark registration at the date of registration of the disputed domain names in order to establish its rights.
The Complainant asserts common law rights in the marks through its continuous use since 1998. The mark has acquired a secondary meaning sufficient to establish a common law right.
The Washington Ceasefire case is helpful as a precedent. In that case, the complainant and the respondent were on opposite sides of the gun control debate. The panelist found that the complainant had established a common law mark in “Washington Ceasefire” which expression had acquired a secondary meaning, having been used continuously in the media since 1983. The public associated the mark with the complainant’s not‑for‑profit work.
In this case, it is not disputed by the Respondent that the Complainant has used the mark USAEYES over a long period. His objections to the registration of the trademark are irrelevant. The Respondent could have objected to the United States Patent & Trademark Office if he wanted to stop registration of the trademark. Once registration has been granted, it is not for a panelist or a respondent to go behind the fact of that registration.
Accordingly, the Complainant has proved the first limb of ¶ 4(a) of the Policy.
The Complainant gave the Respondent no rights in the disputed domain names. The burden, therefore, shifts to the Respondent to prove that he has rights or legitimate interests under Paragraph 4(c) of the Policy.
The only part of that paragraph relevant here is 4(c)(iii), namely to the effect that the Respondent has to show a legitimate non-commercial and fair use in his establishing the website critical of the Complainant which uses the Complainant’s trademark. The use must be without intent for commercial gain, misleadingly to divert consumers or to tarnish the mark.
The disputed domain names resolve to websites advertising news and opinions about the Complainant just as they did in the Washington Ceasefire case. Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 17, 2001), shows that the right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant is very different from having a right or legitimate interest in respect of a domain name identical to the Complainant’s mark. This was the reasoning favored by the panelist in the Washington Ceasefire case and it is applicable here.
The WIPO Overview of WIPO Panels’ Views on Selected UDR Questions has a relevant section 2.4. In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech website, there are two main views. The first is, as indicated by the above cases, that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or which conveys an association with the mark. The opposing view is that, irrespective of whether the domain name as such conveys criticism, the Respondent has a legitimate interest in using the trademark as part of the domain name of the criticism site, if the use is fair and non-commercial. This Panel favors the first view. It is not a legitimate, non-commercial or fair use of the mark to use it in a site critical of the Complainant, the owner of the mark, without indication that it is a criticism site.
There was relevant discussion in the recent NAF decision of Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) concerning the domain name <ringostar.mobi> as to whether the mere fact of registration of a famous name is of itself evidence of bad faith. The majority of the panel in that case agreed with the view that knowledge of a famous mark at date of registration can be evidence of bad faith registration and use. The contrary view where the domain name was used for a criticism site is shown in Britannia Bldg. Soc’y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 12, 2001), where the name of the organization was used as the name of a criticism site of that organization without any adornment to indicate that it was a criticism site.
In RyanAir Ltd v. Coulston, D2006-1194 (WIPO Dec. 12, 2006), the Panel tried to reconcile the disparate views on criticism sites, noting that where US law applies, free speech and fair use issues tend to favor the use of a criticism or fan site where the domain name address consists of a trademark plus a top-level domain suffix. Whereas, under the European legal principles, such domain names may not be permitted unless there are additional words indicating the site is not the authorized site of the trademark owner.
In Triodos Bank NV v. Dobbs, D2002-0776 (WIPO Oct. 3, 2002), it was held that, even although the Respondent may have had a genuine grievance against the Complainant, it could not use the Complainant’s mark in the disputed domain name without some adornment.
The Panel accepts the above view and holds that the Respondent has not proved that he comes within Paragraph 4(c)(iii) of the Policy.
Registration and Use in Bad Faith
The Complainant is obliged to prove both bad faith at the time of registration of the disputed domain name and ongoing bad faith use. Considerations under the ‘rights and legitimate interests’ under Paragraph 4(a)(ii) and Paragraph 4(c)(iii) often, as here, overlap with bad faith considerations.
The Compagnie Generale case shows that, although the Respondent’s complaint website did not compete with the Complainant’s business or earn commercial gain, the Respondent’s use of the Complainant’s mark with a view to cause damage and disruption to the Complainant cannot be right. Still less, where the use of the domain name will trick Internet users intending to visit the trademark site but, instead, visit the Respondent site. The panel in that case held that the domain name had been registered in bad faith.
The following excerpts from the Triodos Bank case and the Compagnie Generale case encapsulate the situation in the present case and are adopted with gratitude.
In short, what the respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the complainant and which it proposed at the time of registration to use in a campaign against the complainant to cause the complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the complainant’s website.
Had the respondent been a competitor, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iii) of the Policy. Had the respondent been acting “for commercial gain”, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iv) of the Policy.
In this Case, the respondent is neither a “competitor” of the complainant nor is it acting for “commercial gain” in the ordinary sense of those words. However, the panel recognizes the respondent’s right to campaign and to conduct its campaigns by way of the internet, the Domain Name is not necessary for that purpose. Moreover, registration of a domain name comprising the name and trade mark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trade mark owner’s site into visiting the registrant’s site. The panel therefore finds that the Domain Name was registered in bad faith. (Triodos)
In this Case, the respondent is neither a “competitor” of the complainant nor is it acting for “commercial gain” in the ordinary sense of those words. However, while the panel recognizes the respondent’s right to campaign and to conduct its campaigns by way of the internet, the Domain Name is not necessary for that purpose. Moreover, registration of a domain name comprising the name and trade mark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trade mark owner’s site into visiting the registrant’s site. The panel therefore finds that the Domain Name was registered in bad faith. (Compagnie Generale)
There can be no doubt that the Respondent well knew of the Complainant and its then common law mark at the time when he registered the disputed domain name. A perusal of the website shows visitor criticism of the Complainant. Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003), held that the use of a domain name identical to the Complainant’s mark to criticize the complainant’s business practices is evidence of registration and use of the domain name in bad faith.
The Panel follows the majority view in the Starkey case, the Compagnie Generale case and the Triados Bank case, all noted above. The registration of the Complainant’s mark without further adornment is likely to cause confusion to Internet users. Therefore, the Complainant has established bad faith registration and use under Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usaeyes.info>, <usaeyes.net>, and <usaeyes.biz> domain names be TRANSFERRED from Respondent to Complainant.
Dated: 7th February, 2008