national arbitration forum
Council for Refractive
Surgery Quality Assurance a nonprofit
Claim Number: FA0812001237910
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.
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.
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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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
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.”).
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
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