COMPLAINT IN ACCORDANCE WITH THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

Transcription

1 DR. HERBERT NEVYAS AND ) DR. ANITA NEVYAS-WALLACE ) Nevyas Eye Associates ) Two Bala Plaza, PL-33 ) Domain Names In Dispute: 333 E. City Avenue ) NevyasLasik.com Bala Cynwyd, Pennsylvania ) HerbertNevyasLasik.com (Complainants) ) AnitaNevyasLasik.com ) v. ) ) A HAPPY DREAM HOST CUSTOMER ) 417 Associated Rd. #324 ) Brea, California ) (Respondent) ) COMPLAINT IN ACCORDANCE WITH THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY [1.] This Complaint is hereby submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999, and the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP Rules), with an effective date of March 1, 2010, and the National Arbitration Forum (FORUM) Supplemental Rules (Supp. Rules). UDRP Rule 3(b)(i). [2.] COMPLAINANT INFORMATION [a.] Complainant: Dr. Anita Nevyas-Wallace and Dr. Herbert Nevyas [b.] Address: Nevyas Eye Associates Two Bala Plaza, PL E. City Avenue Bala Cynwyd, PA [c.] Telephone: [d.] Fax: [e.] info@nevyas.com [a.] Complainant s Counsel: Bryna S. Scott, Esquire Alexis Arena, Esquire Flaster/Greenberg P.C. [b.] Address: 1600 John F. Kennedy Blvd., Suite 200

2 Philadelphia, PA [c.] Telephone: [d.] Fax: [e.] Complainants prefer the following method of communications in the administrative proceeding: Electronic-Only Material [a.] Method: [b.] Address: [c.] Contact: Alexis Arena Material Including Hard Copy [a.] Method: mail [b.] Address: 1600 John F. Kennedy Blvd., Suite 200 Philadelphia, PA [c.] Contact: Alexis Arena panel. Complainants choose to have this dispute heard before a single-member administrative [3.] RESPONDENT INFORMATION LISTED IN WHOIS DATABASE NEVYASLASIK.COM [a.] Name: A Happy DreamHost Customer [b.] Address: 417 Associated Rd #324 Brea, California [.] Telephone: [d.] Fax: unlisted [e.] nevyaslasik@proxy.dreamhost.com ANITANEVYASLASIK.COM [a.] Name: A Happy DreamHost Customer [b.] Address: 417 Associated Rd #324 Brea, California [.] Telephone: [d.] Fax: unlisted [e.] anitanevyaslasik@proxy.dreamhost.com HERBERTNEVYASLASIK.COM [a.] Name: A Happy DreamHost Customer [b.] Address: 417 Associated Rd #324 2

3 Brea, California [.] Telephone: [d.] Fax: unlisted [e.] See Whois Database Information and Registrar Whois Information, attached hereto as Exhibit A. [4.] DISPUTED DOMAIN NAME(S) [a.] The following domain name is the subject of this Complaint: NeyvasLasik.com AnitaNevyasLasik.com HerbertNevyasLasik.com [b.] Registrar Information: [i.] Registrar s Name: New Dream Network, LLC [ii.] Registrar Address: 417 Associated Road, PMB 257 Brea, California [iii.] Telephone Number: [iv.] Fax: unlisted [iv.] Address: unlisted [c.] Trademark/Service Mark Information: Complainants Dr. Herbert Nevyas and Dr. Anita Nevyas-Wallace are surgical and medical ophthalmologists that have performed lasik surgery since at least as early as See Verification of Dr. Anita Nevyas-Wallace, attached as Ex. B. Dr. Herbert Nevyas founded Nevyas Eye Associates in 1964 and has directed its medical and surgical ophthalmology practice since that time. Ex. B. Dr. Anita Nevyas changed her name to Anita Nevyas-Wallace in 1987, but continues to use the name Anita Nevyas. Ex. B. Both of Complainants have practiced lasik surgery continuously at Nevyas Eye Associates since at least as early as Ex. B. Their practices are described at the website See Printouts from Nevyas.com attached as Exhibit C. Complainants have advertised their lasik practice to the general public since 1992 and have done so continuously using the marks Dr. Herbert Nevyas, Dr. Anita Nevyas, Nevyas Eye Associates, and Nevyas Lasik. Ex. B. In addition to traditional forms of advertising and marketing, Complainants advertise their practice online through the websites Nevyas.com and NevyasVideo.com, through informational articles posted on other websites, and through online videos at websites such as YouTube.com. Ex. B. For example, Complainants YouTube videos display the headings Dr. Herbert J. Nevyas LASIK and Nevyas Eye Associates LASIK. See YouTube videos displaying marks, attached as Exhibit D. 3

4 The Forum has previously recognized that individuals have common law trademark rights in their own names enforceable in domain dispute proceedings. See Jerry Damson, Inc. v. Texas International Property Assoc., F (Nat. Arb. Forum Apr. 10, 2007) (Jerry Damson doing business under the mark Jerry Damson Acura had right to JerryDamsonAcura.com domain name). See also Margaret Drabble v. Old Barn Studios Ltd., D (WIPO Mar. 26, 2001) (author Margaret Drabble had common law rights to MarthaDrabble.com domain); Jeanette Winterson v. Mark Hogarth, D (WIPO May 22, 2000) (Jeanette Winterson had common law rights to her name); Julia Fiona Roberts v. Russell Boyd D (WIPO May 29, 2000) (Julia Roberts had common law rights to Julia Roberts ); Thibodeau, v. Yomtobian, FA (Nat. Arb. Forum June 28, 2000) (rights to Dr. Lauren in dispute re: The complainant also need not be a famous individual for common law rights in his or her name to arise. See, e.g., Dr. Paul Guerrino v. Yin Chew, FA (Nat. Arb. Forum June 17, 2002) (Practicing dentist Dr. Guerrino owned rights to Finally, it is not necessary that Complainants own a trademark registration for their mark for that mark to be protected. See Jerry Damson, supra; Broad Corp. v. Renteria, D (WIPO Mar. 23, 2000) (the Policy does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names and applying Policy to unregistered trademarks and service marks ). Complainants have continuously used the Nevyas Lasik mark and similar trademarks containing their names and the Nevyas surname in connection with their medical and surgical ophthalmology practices since at least as early as Ex. B. As such, they have developed common law rights in the marks. See Tuxedos By Rose v. Nunez, FA (finding common law rights in a mark where its use was continuous and ongoing). [5.] FACTUAL AND LEGAL GROUNDS This complaint is based on the following factual and legal grounds: [a.] Respondent s domain names are nearly identical to Complainants trademarks, pursuant to ICANN Policy 4(a)(i), and are being used in a deceptive manner. Respondent s domain names AnitaNevyasLasik.com, HerbertNevyasLasik.com, and NevyasLasik.com are nearly identical to Complainants names and trademarks. Complainants are well-known lasik surgeons whose services are advertised in connection with the marks Herbert Nevyas Lasik and Anita Nevyas Lasik and the domains Nevyas.com and NevyasVideo.com. It is well-established that the addition of a generic top level domain such as.com to a trademark, or other minor changes to the mark, do not cause the domain name to be non-identical. See, e.g., Jerry Damson, supra.; Tropar Mfg. Co., Inc. v. TSB, FA (Nat. Arb. Forum Dec. 4, 2002 ( The addition of a generic top-level domain does not add any distinguishing characteristics to a domain name because it is a required feature in every domain name. ) 4

5 Respondent further increases the likelihood of confusion between his domains and Complainants by advertising his websites in a deceptive manner that suggests they are affiliated with Complainants and Nevyas Eye Associates. A Google search for Nevyas Lasik or a similar term displays the following Google headlines for Respondent s websites: Welcome to HerbertNevyasLasik.com! herbertnevyaslasik.com/ Drs. Herbert Nevyas & Anita Nevyas-Wallace - herbertnevyaslasik.com/index.php?... Nevyas Eye Associates - See Google search results, attached as Ex. E (Respondent s websites are highlighted so that they can be distinguished from Complainants website). Once a patient or potential patient visits Respondent s websites, the patient views disparaging and false remarks about Complainants. See Printouts from Respondent s websites, attached as Exhibit F. Respondent s websites also contain links to other websites featuring the services of other lasik surgeons and doctors with similar ophthalmology practices. Id. Respondent s websites track the number of clicks to each competitive website, suggesting that Respondent may be profiting from this confusion and traffic to his website by obtaining clickthrough fees. Id. [b.] Respondent has no rights or legitimate interests in the domain names, pursuant to ICANN Policy 4(a)(ii). Respondent is apparently an individual by the name of Dom Morgan, who was previously involved in state and federal litigation with Complainants. See Ex. F (Printout from Respondent s websites stating websites are owned by Dom Morgan). Dom Morgan was a patient of Complainants in 1998 who was unhappy with the results of his treatment and subsequently posted numerous false, disparaging and defamatory statements regarding Complainants and their practice on multiple websites. Ex. B. Complainants sued him and subsequent to these lawsuits, statements were removed from his websites. Unfortunately, the parties legal battle continues. Ex. B. Currently, Respondent owns and operates a number of websites where he criticizes the practice of lasik surgery and various lasik surgeons, including Complainants. Respondent is the owner of websites such as and See Exhibit G (Whois Information for Respondent s Other Websites). Respondent also operated the website This action does not implicate Respondent s ability to post critical statements regarding Complainants on those domains, or any domains that do not contain Complainants trademarks. The domain names at issue in this action indicate that they are owned by Complainants, not that they are owned by an individual criticizing Complainants. Prior panel decisions have held that this type of initial interest confusion, caused by the domain name itself, is impermissible. See The Paxton Herald v. Millard, FA (Nat. Arb. Forum Aug. 21, 2002) ( While the content of Respondent s website may enjoy First Amendment 5

6 and fair use protection, those protections do not equate to rights or a legitimate interest with respect to a domain name which is confusingly similar to another s trademark. ); Council of American Survey v. Pinelands Web Services, D (WIPO July 19, 2002) ( Respondent may have a right to refer to the mark in critical content, the wholesale appropriation of Complainant's mark in a domain name, without any distinguishing material, creates confusion with Complainant's business and is not fair use merely for the purpose of criticism No criticism is apparent from the domain name itself; it is not sufficient that the criticism may be apparent from the content of the site. ) 1. Respondent has no rights or legitimate interests in the domains because he is not commonly known by Complainants trademarks and does not use the marks in connection with a legitimate offering of goods and services. Respondent has no rights or legitimate interests in NevyasLasik.com domains because he sells no goods or services on his websites and seeks only to capitalize on Complainants trademarks by luring consumer traffic to his website, disparaging Complainants, and advertising similar lasik services offered by other practitioners. For example, when one of the links on Respondent s website is clicked, the customer visits where the customer views the following advertisements: Tri-County Eye Physicians Cataract & Oculo-plastic Surgery Laser Vision Correction/LASIK Locate an Eye Doctor Locate an Eye Doctor in your area and Learn more about your Eyes Other links on Respondent s website also advertise competitive products and services. See Printouts from Respondent s websites, attached as Exhibit F. Respondent s websites display the number of hits on each link, indicating that Respondent s websites have redirected thousands of consumers to other websites advertising competitive products and services. Respondent also has a history of using websites to solicit donations to pay his legal fees in litigation against Complainants. See, e.g., Respondent s NevyasLasik.com domains invite visitors to contact him and support him in his litigation with Complainants. Respondent has no trademark or service mark rights in the Nevyas Lasik, Anita Nevyas Lasik or Herbert Nevyas Lasik trademarks and is not commonly known by these marks. Having no rights in the marks at issue, and offering no goods or services, Respondent simply attempts to profit and damage Complainants by misleadingly diverting customer traffic away from Nevyas.com and to his websites and the links on his websites. Respondent s use of domain names that are nearly identical to Complainants marks to divert Internet users to websites that offer competitive products and services, and for which 6

7 Respondent presumably receives a commission or click-through fees, is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domains under the ICANN Policy. See Emmit Smith, III v. EmmitSmith.com, FA (Nat. Arb. Forum Oct. 26, 2005) (citing Disney Enters., Inc. v. Dot Stop, FA (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent s diversionary use of the complainant s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); Black & Decker Corp. v. Clinical Evaluations, FA (Nat. Arb. Forum June 24, 2002) (holding that the respondent s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name)). 2. Respondent has no rights or legitimate interests in the domains because he is not making a legitimate, non-commercial fair use of the domains pursuant to Paragraph 4c(iii), but is using the domains with an intent to tarnish Complainants trademarks and profit from misleadingly diverting customers. Respondent registered the NevyasLasik.com domains in February, See Ex. A. Respondent s legal battles with Complainants began in 2000 and have continued into the present. Ex. B. Respondent s websites make clear that Respondent s goal is to tarnish Complainants trademarks, damage Complainants business, and profit from the use of Complainants marks. Ex. F. Complainants assert this complaint not to impair Respondent s First Amendment rights but because Respondent is using Complainants trademarks in the NevyasLasik.com domains to suggest that the domains are sponsored by or affiliated with Complainants, to confuse Complainants patients and potential patients, and to lure traffic to Respondent s websites. Respondent s website headlines - Nevyas Eye Associates and Welcome to NevyasLasik.com! misleadingly suggest that patients will be visiting Nevyas Eye Associates or Complainants Nevyas Lasik practice if they select those links. Once the patient arrives at Respondent s websites, Respondent s has already profited from this initial interest confusion and has succeeded in tarnishing Complainants trademarks. [c.] Respondent registered and uses the domains in bad faith, pursuant to ICANN Policy 4(a)(iii). 1. Respondent s Registration of Multiple Domain Names Containing Complainants Marks and His Advertisement and Use of Those Domain Names Causes a Likelihood of Confusion, Particularly Initial Interest Confusion, to Attract Individuals Seeking Complainants Website to Respondent s Websites. Paragraph 4(a)(iii) of the ICANN Policy lists a non-exhaustive list of circumstances that indicate bad faith registration and use of domains, which includes evidence that the respondent 7

8 intentionally attempted to attract, for commercial gain, Internet users to [his or her] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [his or her] web site or location or of a product or service on your web site or location. Respondent s use of Complainants marks in his domain names creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent s websites for commercial gain. See Am. Univ. v. Cook, FA (Nat. Arb. Forum Dec. 22, 2003) ( Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith. ); see also G.D. Searle & Co. v. Celebrex Drugstore, FA (Nat. Arb. Forum Nov. 21, 2002); Kmart v. Khan, FA (Nat. Arb. Forum Nov. 22, 2002). Furthermore, where a disputed domain name containing the complainant s trademark is being used to feature links to websites that compete with the complainant, presumably for referral fees, that use alone constitutes bad faith under the Policy. See Univ. of Houston Sys. v. Salvia Corp., FA (Nat. Arb. Forum Mar. 21, 2006); Asbury Auto. Group, Inc., v. Tex. Int l Prop. Assoc., FA (Nat. Arb. Forum May 29, 2007); David Hall Rare Coins v. Tex. Int l Prop. Assoc., FA (Nat. Arb. Forum Apr. 9, 2007); Am. Airlines, Inc., v. Tex. Int l Prop. Assoc., FA (Nat. Arb. Forum Apr. 10, 2007). 2. Respondent Engaged in a Pattern of Registering Domains Reflecting Complainants Trademarks, Which Prevents Complainants from Registering Corresponding Domain Names Reflecting Their Marks. Pursuant to Paragraph 4(a)(iii), evidence of bad faith also includes evidence that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] engaged in a pattern of such conduct. Respondent s registration of a series of domains that all contain essentially the same website content suggests a pattern of registering domains so that Complainants cannot register them. There is no other justification for Respondent s ownership of a series of domain names featuring the same website content. 3. Respondent Registered the Domain Names Primarily for the Purpose of Disrupting Complainants Business. Evidence of bad faith can also include facts indicating that the domain was registered primarily for the purpose of disrupting the business of the trademark owner. Respondent states that his websites were created for the following purpose: to update and further prove all allegations I brought against the Nevyases as documented on my previously owned website LasikSucks4u.com and now LasikDecision.com. I would also like to show how I believe the courts were wrong in many of their decisions and/or opinions regarding my med mal lawsuit Morgan v. Nevyas and the current Nevyas v. Morgan lawsuit. Ex. F. Thus, Respondent admits that his websites were registered and are being used for to disrupt Complainants businesses. Respondent falsely alleged that Complainants committed 8

9 medical malpractice, and if his stated intention is to attempt to publicly prove those allegations, his conduct necessarily involves disrupting Complainants businesses. See also Dr. Karl Albrecht v. Eric Natale, FA (Nat. Arb. Forum Sept. 16, 2000) ( The Respondent intentionally registered a domain name which uses the Complainant s name. There is no reasonable possibility that the name <karlalbrecht.com> was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith. ) [6.] REMEDY SOUGHT Complainants request that the panel issue a decision that Respondent s domain-name registrations be transferred to Complainants. [7.] OTHER LEGAL PROCEEDINGS None. [8.] COMPLAINT TRANSMISSION Complainants assert that a copy of this Complaint, together with the cover sheet as prescribed by NAF s Supplemental Rules, has been sent or transmitted to Respondent at the contact information provided, in accordance with ICANN Rule 2(b), and to the domain name Registrar at the contact information provided, in accordance with NAF Supp. Rule 4(e). [9.] MUTUAL JURISDICTION Complainants will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the location where the Respondent is located, in accordance with ICANN Rule 3(b)(xiii). [10.] CERTIFICATION Complainants agree that their claims and remedies concerning the registration of the domain name, the dispute, or the dispute s resolution shall be solely against the domain-name holder and waive all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of deliberate wrongdoing, (b) the Registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents. Complainants certify that the information contained in this Complaint is to the best of their knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a goodfaith and reasonable argument. 9

10 Respectfully Submitted, _ Bryna S. Scott, Esq. Alexis Arena, Esq. FLASTER/GREENBERG, P.C John F. Kennedy Blvd., Suite 200 Philadelphia, PA alexis.arena@flastergreenberg.com Attorneys for Claimants Dated: July 1, 2010

11 EXHIBIT LIST A B C D E F G Whois Information for Respondent s NevyasLasik.com Domains Declaration of Dr. Anita Nevyas-Wallace Printouts from Nevyas.com Domain Printouts from Complainants YouTube Videos Google search results highlighting Respondent s domains Printouts from Respondent s Domains Whois Information for Respondent s Other Domains

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20 DR. HERBERT NEVYAS AND ) DR. ANITA NEVYAS-WALLACE ) Nevyas Eye Associates ) Two Bala Plaza, PL-33 ) Domain Names In Dispute: 333 E. City Avenue ) NevyasLasik.com Bala Cynwyd, Pennsylvania ) HerbertNevyasLasik.com (Complainants) ) AnitaNevyasLasik.com ) v. ) ) A HAPPY DREAM HOST CUSTOMER ) 417 Associated Rd. #324 ) Brea, California ) (Respondent) ) VERIFICATION OF DR. ANITA NEVYAS-WALLACE I, Dr. Anita Nevyas-Wallace declare that: 1. My father, Dr. Herbert Nevyas, and I are surgical and medical ophthalmologists at Nevyas Eye Associates. We have both been performing lasik surgery for patients since at least as early as Dr. Herbert Nevyas has directed a medical and surgical ophthalmology practice since he founded Nevyas Eye Associates in We have been advertising our lasik practice to the general public since at least as early as 1995 using the marks Dr. Herbert Nevyas, Dr. Anita Nevyas, Nevyas Eye Associates, and Nevyas Lasik. We have continuously used the marks since that time. 4. I legally changed my name to Anita Nevyas-Wallace in However, I still use the name Anita Nevyas. 5. We advertise our practice through the website Nevyas.com, through informational articles posted on other websites, and through online videos at websites such as YouTube.com and NevyasVideo.com. 6. Dom Morgan was a patient of ours in He was unhappy with the results of his treatment and subsequently posted numerous false, disparaging and

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