Council for Refractive
Surgery Quality Assurance, a nonprofit
Claim Number: FA0712001118174
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
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 postmaster@usaeyes.info, postmaster@usaeyes.net,
and postmaster@usaeyes.biz by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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).
B. Respondent
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:
1.
A judge
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.
FINDINGS
The Complainant
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.
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.
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)
and
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.
DECISION
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.
Hon. Sir
Dated: 7th February, 2008