Complainant is MiraBelle Face and Body PLLC, United States of America (“United States”), represented by ByrdAdatto, PLLC, United States.
Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Alina Prus, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 18, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on November 15, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundComplainant states in its Complaint and provides evidence in the respective Annexes sufficient to support that Complainant, MiraBelle Face and Body PLLC, a Texas professional limited liability company, operates the MiraBelle Spa, a medical spa designed by board certified plastic surgeons that provides medical spa services and cosmetic surgical procedure services under a words plus design service mark featuring the distinctive predominant term MIRABELLE (the “MIRABELLE Mark”). Based in Texas, United States, Complainant has operated its medical spa to manage its services provided under the MIRABELLE Mark since as early as March 11, 2018. Since September 2019, Complainant also has marketed its medical spa and cosmetic surgical procedure services online under the MIRABELLE Mark through its website accessed at “www.mirabellespa.com” (the “Official MIRABELLE Website”) based on its ownership of the domain name
The disputed domain name was registered on January 14, 2021 and resolves to a corresponding copycat website pretending to be Complainant featuring digital content copied directly from the Official MIRABELLE Website, including Complainant’s logo, MIRABELLE Mark and counterfeit versions of Complainant’s images, text and graphics.
5. Parties’ Contentions A. ComplainantComplainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed, Complainant must demonstrate that all elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of a valid and subsisting trademark registration for the MIRABELLE Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Panel finds here that the disputed domain name wholly incorporates the predominant portion of Complainant’s registered MIRABELLE Mark. Furthermore, adding of the article “the” before Complainant’s Mark and the dictionary term “spa” after it, does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. In fact, Respondent’s selection of the term “spa” for the disputed domain name to create a strikingly similar string to Complainant’s domain name used for the Official Mirabelle Website not only clinches confusing similarity, but fortifies other factors more appropriately considered under 6.C below.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has never authorized, licensed, or otherwise permitted Respondent to use the MIRABELLE Mark in any manner, nor was there ever any connection or relationship between Complainant and Respondent.
Complainant has also claimed with persuasive evidence submitted that Respondent is not commonly known by the disputed domain name. The original Respondent listed in the WhoIs record submitted with the initial Complaint is “Privacy service provided by Withheld for Privacy ehf”. The Registrar disclosed the underlying registrant, “Alina Prus”, whom has been added to Complainant’s First Amended Complaint to include this registrant as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
Most importantly, Complainant’s evidence shows the disputed domain name resolves to Respondent’s counterfeit website featuring the MIRABELLE Mark above digital images and graphics clearly copied directly from Complainant’s Official MIRABELLE Website. Complainant further shows that Respondent has used the disputed domain name to conduct fraudulent activities by offering medical spa and cosmetic surgical procedure services. Complainant’s evidence shows that Respondent is using the disputed domain name solely for the purpose of perpetrating a fraud through pretending an affiliation with Complainant. The Panel finds Respondent has no rights to or legitimate interests in the disputed domain name. See, Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,WIPO Case No. D2017-0075.
These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1.
Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAs considered in section 6.A. above Respondent added the term “spa” behind the MIRABELLE Mark to create the disputed domain name, which is identical to the manner in which Complainant added the term “spa” after its Service Mark for Complainant’s own domain name used to access the Official MIRABELLE Website. Respondent, therefore, could not have registered the disputed domain name without prior actual knowledge of Complainant and its MIRABELLE Mark.
Respondent’s copycat website features not only Complainant’s MIRABELLE Mark and logo, but also verbatim copies of Complainant’s content screen scraped directly from numerous web pages of the Official MIRABELLE Website, including Complainant’s blog, identities of Complainant’s staff (including their biographies and photographs), information on Complainant’s products and services, photographs of Complainant’s patients, and descriptions of Complainant’s membership program. It is implausible, therefore, to believe that Respondent was not aware of the MIRABELLE mark when it registered its confusingly similar disputed domain name to access a counterfeit website, but, as Complainant contends, shows Respondent’s clear intention to target the MIRABELLE Mark through the registration of the disputed domain name in bad faith. In the circumstances of this case, where Respondent registered the disputed domain name to blatantly engage in per se illegitimate activity for its commercial gain, with actual knowledge demonstrated through configuration of a disputed domain name targeting Complainant’s registered mark, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.1.4.
Bad faith use is clear from Respondent’s stridently copycat website accessed through the disputed domain name, created for the purposes of perpetrating fraud to confuse consumers to visit Respondent’s fake site for its commercial gain in violation of Policy paragraph 4(b)(iv), or to disclose private personal, financial and healthcare data, to purchase counterfeit services or products by suggesting an affiliation with Complainant as discussed in detail above. Given the substantial evidence on file that shows use of the disputed domain name to commit fraud against Complainant by offering counterfeits of Complainant’s medical spa services and cosmetic surgical procedure services, the Panel finds bad faith use. See, Valero Energy, supra; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017.
For these reasons, the Panel finds that Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Scott R. Austin
Sole Panelist
Date: November 29, 2021