Dr. Herbert Nevyas and Dr.
Anita Nevyas-Wallace v. Dom Morgan / n/a
Claim Number: FA1007001333710
PARTIES
Complainant is Dr. Herbert Nevyas and Dr. Anita
Nevyas-Wallace (“Complainant”),
represented by Alexis Arena, of Flaster/Greenberg P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com>, registered
with New
Dream Network, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 6, 2010.
On July 16, 2010, New Dream Network, LLC confirmed by e-mail to
the National Arbitration Forum that the <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com> domain
names are registered with New Dream Network, LLC
and that the Respondent is the current registrant of the names. New Dream
Network, LLC has verified that Respondent is bound by the New Dream Network, LLC registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On July 22, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of August 11, 2010 by which Respondent could file
a Response to the Complaint, via e-mail
to all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@nevyaslasik.com, postmaster@herbertnevyaslasik.com,
and postmaster@anitanevyaslasik.com.
Also on July 22, 2010, the Written Notice of the Complaint, notifying
Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on July 30, 2010.
Complainant submitted an Additional Submission that was received and
determined to be in compliance with Forum Supplemental Rule 7 on August 7,
2010.
Respondent submitted an Additional Submission that was received and
determined to be in compliance with Forum Supplemental Rule 7 on August 9,
2010.
On August 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Prof. Darryl C. Wilson, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainants are eye doctors and surgeons who have practiced Lasik
surgery continuously since at least as early as 1995 at Neyvas Eye Associates.
They have advertised their medical practice in a variety of forums and mediums
and contend that they have developed common law rights in the marks “Dr.
Herbert Neyvas”, “Dr. Anita Neyvas”, “Neyvas Eye Associates”, and “Neyvas
Lasik”. Complainants assert that Respondent’s domain names are nearly identical
to Complainants’ names and trademarks and are being used in a deceptive and
confusing manner. Complainants note that “the domains at issue in this action
indicate that they are owned by the Complainants, not that they are owned by an
individual criticizing Complainants” and that as such exemplify impermissible
initial interest confusion. Complainants also contend that Respondent is an
individual who owns and operates a number of websites where he criticizes the
practice of Lasik surgery and various surgeons but sells no goods or services
on his websites and otherwise has no rights or legitimate interests in the
disputed domain names. It is further asserted that Respondent’s websites
advertise competitive products and services, diverting Internet users to
Complainants’ competitors. Complainants also argue that Respondent registered
and uses the disputed domain names in bad faith.
B. Respondent
Respondent states that “first and foremost it is important to note at
the outset that this is a case about Internet gripe sites….” Respondent
contends that Complainants are misrepresenting facts to impede Respondent’s
First Amendment Rights and thus “comes before the national arbitration forum
with unclean hands”. Respondent additionally states that “the Complainants are
a risk to public safety”. Respondent also asserts that “even assuming that
Complainants’ names can be the subject of a trademark-like UDRP complaint, this
UDRP proceeding should take account of constitutional and trademark law in the
C. Additional Submissions
Complainants’ additional submission contends that Respondent’s
recognition and revision of his website after receiving the complaint in this
matter was not an indication of his rights to the disputed domains but instead
indicative of his use of the domains in bad faith prior to receiving the
complaint. Complainants also assert that Respondent did not revise the
headlines or “title tags” to his websites and the phrases thereon are indicative
of website content that is misleading to consumers. Complainant further
contends that Respondent is incorrect in his evaluation of the prospect of
whether this case is a proper basis for an initial interest confusion claim and
that Respondent has failed to show a legitimate non-commercial fair use or that
his First Amendment rights were implicated since Complainants did not dispute
Respondent’s right to criticize but instead the domain names resolving to
certain websites used to do so.
Respondent’s additional submission contends that Complainants’
“Additional Submission, as their Complaint, consists of half-truths and worse.”
The additional submission cites to no past UDRP administrative decisions or
other judicial cases as precedent for any assertions made therein. Respondent’s
additional submission provides only factual allegations regarding various
purported experts and the Complainants’ alleged familial relationships.
Respondent concludes his additional submission by questioning the candor of
lawyers submitting “earwitness” testimony.
FINDINGS
Complainants Dr. Herbert Neyvas and Dr. Anita
Nevyas-Wallace are medical ophthalmologists who have performed Lasik surgery
since at least as early as 1995. Dr. Herbert Nevyas founded Nevyas Eye
Associates in 1964 and has directed its medical and surgical practice since
that time. Dr. Anita Nevyas-Wallace changed her name in 1987 but professionally
still uses the name Anita Nevyas. Complainants have continuously advertised
their practice online and in print using their personal names as well as the
names “Nevyas Eye Associates” and “Nevyas Lasik” and claim common law trademark
rights in the same. Respondent Dom Morgan was a patient of the Complainants in
1998 who claimed that Complainants damaged his eyes through Lasik surgery and
began publicly complaining about Complainants medical practice. The claims and
complaints led to numerous lawsuits being filed by both parties against each
other, some of which are still pending. Respondent has purchased numerous
domain names and established various websites where he criticizes the practice
of Lasik surgery and various Lasik surgeons including the Complainants.
Respondent raised no substantive legal arguments regarding the Complainants’
claim to have common law trademark rights in their names and the marks indicated
above. Respondent instead claims that those rights are irrelevant in light of
his First Amendment right to criticize Complainants via the disputed domains.
As a preliminary matter the panel notes that there are multiple
Complainants in this matter who claim rights to their individual names as well
as rights in the NEVYAS mark generally since they both offer Lasik eye surgery
under that mark. The panel interprets the Forum’s Supplemental Rule 1(e)
to allow multiple parties to proceed as one party where they can show a
sufficient link to each other. For example, in
It
has been accepted that it is permissible for two complainants to submit a
single complaint if they can demonstrate a link between the two entities such
as a relationship involving a license, a partnership or an affiliation that
would establish the reason for the parties bringing the complaint as one
entity.
In Tasty Baking,
The panel finds a sufficient link between the
parties based on their business practice and familial ties to allow for them to
proceed under the single complaint that was filed in this proceeding.
DISCUSSION
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.
Complainants assert common law rights in their NEVYAS mark premised on use since 1964. The Panel finds that a registered trademark is not necessary to establish Complainants’ rights in the mark based on the undisputed evidence provided by Complainants regarding their continuous advertising and use of the mark which subsequently provided a basis for acquired secondary meaning in the mark according to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainants claim to have
practiced Lasik surgery continuously under the NEVYAS mark since 1995 and to
have advertised its Lasik practice to the public since 1992 using “Dr. Herbert
Nevyas,” “Dr. Anita Nevyas,” “Nevyas Eye Associates,” and “Nevyas Lasik,” names
all incorporating the NEVYAS mark.
Complainants argue they have advertised and marketed the NEVYAS mark in
traditional forms, as well on online through informational articles and videos
on sites like <youtube.com>.
Complainants further assert that they have common law trademark rights
in the NEVYAS mark because the mark is their own name. The Panel finds, pursuant to Policy ¶ 4(a)(i), that Complainants have common law rights in their
names and the NEVYAS mark because of
Complainant’s continuous use of the mark and subsequently acquired secondary
meaning. See Jerry
Damson, Inc. v.
Complainants allege that Respondent’s <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com> domain names are confusingly similar to Complainants’ NEVYAS mark because the disputed domain names combine Complainants’ mark with the descriptive terms “herbert” or “anita,” referring to Complainants’ first names, and the descriptive term “lasik,” referring to Complainants’ line of business. Complainants claim the disputed domain names also append the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive terms to Complainants’ mark does not distinguish the disputed domain names sufficiently for the purposes of Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel also finds that the gTLD has no differentiating effect on the disputed domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainants have proven this element.
Complainants contend that Respondent does not have rights and legitimate interests in the <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com> domain names because Respondent is not commonly known by those disputed domain names. The WHOIS information for each of the disputed domain names does not reflect that Respondent is commonly known by any of the disputed domain names. The Panel finds that there is no affirmative evidence in the record indicating otherwise. The Panel finds that these facts indicate that Respondent is not commonly known by the disputed domain names and thus does not possess rights and legitimate interests in the disputed domain names according to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainants assert that Respondent is not using the <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainants allege that Respondent uses the disputed domain names to display a listing of pay-per-click links to third-party websites related to eye health and Lasik surgery, including links to competing providers of Lasik surgery. Respondent alleges in his Response that he receives no click-through fees from the links at the disputed domain names and that his motivation was not to link to competitors but merely to provide complete information on Lasik surgery. The Panel finds that using Complainants’ marks in domain names which feature pay-per-click links does not comport with the bona fide offering of goods or services or the legitimate noncommercial or fair use required by Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainants also argue that Respondent uses the <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com> domain names primarily to criticize Complainants, damage Complainants’ business, and tarnish the NEVYAS mark through Respondent’s false allegations of medical malpractice and the recounting of his dissatisfaction as a former Lasik patient with Complainants. The Panel finds that criticizing Complainants through use of domain names that incorporate Complainants’ NEVYAS mark while adding nothing to indicate Respondent’s registration or interests in the same or otherwise indicate to the public that the domain names and attendant websites do not originate with Complainants is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected). As constituted the disputed domains and surrounding circumstances represent the standard situation upon which initial interest confusion is based. Consumers can not discern from search engine returns that Respondent’s domain names do not resolve to authentic websites established by the Complainants or websites featuring Complainants goods and services. Nor can such a determination be made by reviewing the websites associated tag lines. Complainants do not dispute that once individuals have arrived at Respondent’s websites that one can easily determine that it is not authorized by the Complainants; however, initial interest confusion occurs upon the consumers review of search returns and their resulting decision to visit a website believed to link them to the goods or services they seek only to find that websites contents are otherwise. It is the nature of the domain name and search results that cause initial interests confusion and not the actual content of the website to which the domain names in question resolve.
Complainants have proven this element.
Complainants allege that Respondent’s
registration of the three disputed domain names, <nevyaslasik.com>, <herbertnevyaslasik.com>,
and <anitanevyaslasik.com>,
shows a pattern of domain name registration intended to prevent Complainant
from registering its mark in corresponding domain names. The Panel finds that Respondent’s act of
registering the three disputed domain names containing Complainants’ NEVYAS mark demonstrates bad
faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb.
Forum Sept. 8, 2000) (finding that one instance of registration of several
infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European
Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration
of the <epa-photo.com>, <epaphoto.com> and
<epaphotos.com> domain names was sufficient to constitute a pattern
pursuant to Policy ¶ 4(b)(ii)).
Complainants contend that some of the links present at the <nevyaslasik.com>, <herbertnevyaslasik.com>, and <anitanevyaslasik.com> domain names resolve to the websites of competing Lasik surgery providers. While Respondent is not a competitor of Complainants in a commercial sense, the Panel finds that Respondent is a competitor for UDRP purposes wherein a competitor can be defined as anyone acting in opposition to Complainant. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Thus, the Panel finds that Respondent’s inclusion of links to actual commercial competitors of Complainants and his criticism and negative commentary of Complainants indicate his efforts to disrupt Complainants’ business and therefore support a finding of bad faith registration and use according to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Complainants have
proven this element.
DECISION
Since the Complainants have established all three elements required
under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <nevyaslasik.com>,
<herbertnevyaslasik.com>, and <anitanevyaslasik.com>
domain names be TRANSFERRED from Respondent to Complainants.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: August 26, 2010
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