ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Miradry, Inc. v. Ravi Gehlot, Harley Hospital LTD Case No. D2022-2514 1. The Parties The Complainant is Miradry, Inc., United States of America ("United States"), represented by Holland & Knight, LLP, United States. The Respondent is Ravi Gehlot, Harley Hospital LTD, United Kingdom, represented by Stobbs IP Limited, United Kingdom. 2. The Domain Names and Registrars The disputed domain name is registered with NameCheap, Inc. (the "First Registrar"). The disputed domain name is registered with 123-Reg Limited (the "Second Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2022. On July 12, 2022, the Center transmitted by emails to the Registrars requests for registrar verification in connection with the disputed domain names. On July 12 and 14, 2022, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2022, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 22, 2022. The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on July 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2022. On August 5, 2022, the Respondent requested for an extension to submit a Response. The Response due date was subsequently extended to August 19, 2022. page 2 The Response was filed with the Center on August 19, 2022. The Center appointed Assen Alexiev as the sole panelist in this matter on September 2, 2022. 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 Background The Complainant is a medical device company that has developed the only non-surgical United States Food and Drug Administration ("FDA") cleared procedure to treat excessive sweat. The Complainant produces and markets equipment, consumables and training for the carrying out of this procedure under the brand "miraDry". The Complainant is the owner of the following trademark registrations for MIRADRY (hereafter, "the MIRADRY trademark"): - the United Kingdom trademark MIRADRY with design with registration No. UK00801040350, registered on April 29, 2011, for goods in International Class 10, with priority as of December 4, 2009; - the United Kingdom trademark MIRADRY with registration No. UK00801050025, registered on August 9, 2011, for goods in International Class 10, with priority as of December 4, 2009; - the United Kingdom trademark MIRADRY with registration No. UK00801162374, registered on April 23, 2014, for services in International Class 44, with priority as of November 7, 2012; - the International trademark MIRADRY with registration No. 1050025, registered on May 28, 2010, for goods in International Class 10, with priority as of December 4, 2009; - the International trademark MIRADRY with registration No. 1162374, registered on May 6, 2013, for services in International Class 44, with priority as of November 7, 2012; and - the United States trademark MIRADRY with design with registration No. 3998953, registered on July 19, 2011, for goods in International Class 10. The Complainant markets its products through its official website at the domain name , registered on March 22, 2010. The disputed domain name was registered on April 30, 2018. The disputed domain name was registered on May 23, 2019. The two disputed domain names resolve to almost identical websites advertising the services of a clinic offering the miraDry treatment. 5. Parties' Contentions A. Complainant The Complainant submits that the disputed domain names are identical or confusingly similar to the MIRADRY trademark in which the Complainant has rights. It notes that the disputed domain name incorporates the entirety of the MIRADRY trademark. According to the Complainant, the websites at the disputed domain names falsely advertise the provision of health-related services associated with the Complainant, falsely state that their services have a direct endorsement and association with the Complainant, and claim to be "The Official miraDry Clinic" and the "No.1 provider of miraDry in Europe". The Complainant adds that these websites feature the MIRADRY trademark and the Complainant's droplet page 3 design trademark and imitate elements of the design of the Complainant's official website. According to the Complainant, the purpose of the Respondent's websites is to confuse and mislead individuals into believing that they are directly associated with the Complainant. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as there is no connection between the Parties and the Complainant has not authorized the Respondent to register or use a domain name using the MIRADRY trademark or to make any statements that there exists a relationship between the Parties. The Complainant notes that it registered its domain name and its MIRADRY trademark in 2010, while the Respondent has no independent history of using the name "Miradry" and only registered the disputed domain names in 2018 and 2019. The Complainant submits that it has not endorsed any of the services offered through the Respondent's websites. Nevertheless, these websites make numerous fraudulent claims of a connection with the Complainant and of endorsement by it. According to the Complainant, neither of the clinics referred to in the Respondent's websites has been awarded by the Complainant's any "Diamond Provider" or other performance award or status, and there is no doctor affiliated with either clinic that is recognized by the Complainant as a "Leading Global Expert" in miraDry-branded goods and services, that is a "Leading Global Expert", or "Specialist" in the use of the miraDry-branded goods and services, or that has been appointed by the Complainant as its "Global Ambassador" for the miraDry treatment. The Complainant adds that the Respondent and its clinic are not authorized to represent the Complainant or any of its goods and services, to demonstrate the use of the Complainant's miraDry-branded goods and services, or to provide training in proper use of the Complainant's medical devices bearing the MIRADRY trademark. The Complainant further states that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names, as its websites seek to gain a commercial advantage by deceiving individuals into booking and undergoing a medical procedure using what they claim to be the Complainant's medical devices operated by duly trained medical professionals. According to the Complainant, even if the Respondent actually possesses one or more authentic devices manufactured by the Complainant, such medical devices are not being regularly maintained directly by the Complainant, as mandatory in order for them to operate safely and effectively. The Complainant adds that it has not provided to any personnel of the Respondent any training in the proper use of the miraDry-branded medical device, and is not providing to the Respondent any of the proprietary consumables that must be used and are consumed during each treatment with this device. According to the Complainant, the Respondent uses the Complainant's MIRADRY trademark to appropriate its value and lure individuals seeking medical procedures that use authentic and appropriately maintained medical devices distributed under the MIRADRY trademark and operated by trained professionals, to Respondent's websites where such devices and trained professionals are unavailable. The Complainant contends that the disputed domain names were registered and are being used in bad faith, because the Respondent intentionally attempts to attract, for commercial gain, Internet users to the associated websites by creating a likelihood of confusion with the Complainant's MIRADRY trademark as to the source, sponsorship, affiliation, or endorsement of the services advertised on these websites. According to the Complainant, the Respondent fraudulently affiliates itself with the Complainant by explicitly referring to Complainant's MIRADRY trademark as well as to the Complainant's products, services, and treatment results. The Respondent's websites demonstrate their intent to attract Internet users, for the Respondent's financial gain, by prominently advertising a reduced price for such medical services in order to divert Internet users away from qualified trained providers of such services using the Complainant's properly maintained medical devices. By mimicking the appearance of the Complainant's official website at "www.miradry.com", purporting to offer treatments using the Complainant's products, and purporting to be endorsed by and associated with the Complainant on its websites, the Respondent seeks in bad faith to divert business from the Complainant and its authentic and authorized providers by taking advantage of Internet users' recognition of the MIRADRY trademark for commercial gain. page 4 B. Respondent The Respondent does not dispute that the disputed domain name is identical or confusingly similar to the Complainant's MIRADRY trademark. It disputes that the disputed domain name is identical or confusingly similar to this trademark. According to the Respondent, the MIRADRY trademark is not recognizable in the disputed domain name , because it contains only the generic term "dry", and the Complainant's trademark rights in MIRADRY do not extend to the term "dry". Even if the Complainant was asserting common law or unregistered rights in the term "dry", according to the Respondent it has not shown that the term "dry" has become a distinctive identifier which consumers associate with the Complainant's goods and services. Rather, the term "dry" is commonly used within the deodorant industry to indicate the benefits of a product, and it is a descriptive characteristic of the Complainant's miraDry procedure in that it aims to reduce under-arm perspiration. In the Respondent's submission, the disputed domain name therefore does not relate to the MIRADRY trademark, but to the benefits to the patient post-procedure, and generic and descriptive terms can be registered without targeting a brand. According to it, the rationale for registering the disputed domain names was for offering MIRADRY-approved services. The Complainant was aware of this fact by virtue of it supplying the MIRADRY console to the Respondent's partner at that time, Cosmebeaute. Therefore, there was at the time of registration of the disputed domain names no intention to deceive the end user, as the Respondent is using the MIRADRY trademark to provide services that the Complainant has authorized for sale. The Respondent maintains that it has a legitimate interest in the disputed domain names under Policy, Paragraph 4(c)(i). It submits that prior to the Complainant's filing of the Complaint, there was a mutual understanding that the Respondent was purchasing the Complainant's miraDry console and associated materials for the purposes of conducting miraDry treatment via its partner at the time, Cosmebeaute. On September 30, 2020, the Respondent, together with its business partner at the time, purchased a miraDry treatment console from the Complainant directly including related materials to conduct the treatments. The Respondent notes that Cosmebeaute is still listed on the Complainant's website as an approved provider of miraDry treatments. The Respondent also refers to previous exchanges between various employees at the Complainant's business, which according to it show a pre-existing relationship between the Complainant and the Respondent since May 11, 2018. Based on the above, the Respondent submits that it has had prior dealings with the Complainant and that there was an understanding that the Respondent would be referring clients for miraDry treatment. The Respondent further submits that its use of the disputed domain names is nominative fair use. According to it, the service offered by the Respondent is not readily identifiable without use of the MIRADRY trademark, and it has only used so much of the trademark as is necessary to identify the offered product and service. As to the new generic Top-Level Domain ("gTLD") suffix ".clinic", the Respondent claims that it has used it as an indicator of the services offered. According to the Respondent, its use of the disputed domain names does not suggest sponsorship or endorsement by the Complainant, because the Respondent has included a disclaimer at the bottom of the webpage at "www.miradry.clinic". Therefore, the Respondent submits, it has met the Oki Data criteria (see, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Respondent further submits that the Complainant filed this Complaint based on a broken-down relationship between the Complainant and the Respondent, whereby the Complainant no longer wishes the Respondent to be part of their MIRADRY network. According to the Respondent, there are wider issues at play in its dispute with the Complainant, and the Complaint was filed as a last resort to put pressure on the Respondent to concede to the Complainant's demands. The Respondent denies that the disputed domain names have been registered and are being used in bad faith. It does not contest that it was aware of the Complainant and the MIRADRY trademark at the time of registration of the disputed domain names, and submits that the reason for their registrations was to use the Complainant's trademark legitimately for the purpose of offering miraDry treatments on patients in the Cosmebeaute clinic, which according to the Respondent assists the Complainant's business and supports its page 5 goodwill in the MIRADRY trademark. The Respondent maintains that as part of the MIRADRY program, it needed to purchase the miraDry console and related materials from the Complainant to conduct the treatments, which in turn benefits the Complainant. The Respondent alleges that the Complainant agreed to supply the Respondent with a miraDry console and related products to help conduct the treatments, held training sessions at the Respondent's clinic, and permitted the use of miraDry materials. According to the Respondent, it would be difficult for it to have promoted the MIRADRY trademark online without registering a domain name and creating a website that refers to the trademark, so the registration of the disputed domain names was in good faith in light of the prior dealings between the Complainant and the Respondent's partner, Cosmebeaute. The Respondent also confirms that the content of the websites at the disputed domain names relates to the miraDry treatment, which according to it means that the disputed domain names are being used in good faith. The Respondent asks that the Administrative Panel make a finding of Reverse Domain Name Hijacking ("RDNH") against the Complainant. It submits that this Complaint has been brought abusively and contrary to the intentions of the Policy. The legally represented Complainant has claimed rights in the disputed domain name despite having no registered or claimed unregistered rights in the term "dry", and has filed the Complaint despite knowing of the prior dealings between the Parties and that the disputed domain names were not registered in bad faith. Therefore, according to the Respondent, the Complainant should have known that its Complaint has no prospect of success. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence that it is the owner of the MIRADRY trademark and has thus established its rights in this trademark for the purposes of the Policy. The Respondent does not dispute that the Complainant has rights in this trademark. The disputed domain name reproduces the MIRADRY trademark entirely. This is sufficient for the Panel to conclude that the disputed domain name is identical to this trademark in which the Complainant has rights, and this conclusion is not disputed by the Respondent. The disputed domain name reproduces only its second element of the MIRADRY trademark, i.e., "dry". For its part, the Complainant does not go to great lengths to support its claim that this disputed domain name is confusingly similar to the MIRADRY trademark. The Respondent notes that "dry" is a dictionary word, used in the deodorant industry, and is descriptive of the aim of the Complainant's miraDry procedure. If this argument is accepted, it does not necessarily support a conclusion for the lack of confusing similarity between the disputed domain name and the Complainant's trademark, given that in it "dry" is combined with the ".clinic" gTLD, which clearly refers to medical treatments (the Respondent confirms that it has chosen this gTLD as an indicator of the services offered on its websites), and given that the two disputed domain names resolve to almost identical websites displaying the Complainant's MIRADRY trademark and logos and offering the miraDry products and services of the Complainant. As discussed in sections 1.7 and 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third page 6 Edition ("WIPO Overview 3.0"), panels have found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name because it believed that the domain name was confusingly similar to a mark held by the complainant. In view of the Panel's finding in relation to the other two elements of the Policy, it seems likely that this was what happened. Therefore, under this broader context and on balance, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's MIRADRY trademark for purposes of the first element of the Policy. See VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because there is no connection between the Parties and the Complainant has not authorized the Respondent to register or use a domain name using the MIRADRY trademark or endorsed any of the services offered through the Respondent's websites. However, these websites allegedly make numerous fraudulent claims of a connection with the Complainant and of endorsement by it in an attempt to gain a commercial advantage by deceiving individuals into booking and undergoing the medical procedure they advertise. The Complainant has thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent claims that it registered the disputed domain names to use them in connection with the marketing and provision of miraDry treatments approved by the Complainant. It submits that it has had prior dealings with the Complainant and that it has purchased the Complainant's miraDry console and associated materials for conducting miraDry treatments via its partner at the time, Cosmebeaute, which is listed on the Complainant's website as an approved provider of miraDry treatments. The Respondent maintains that its use of the disputed domain names is nominative fair use, because it has only used so much of the MIRADRY trademark as is necessary to identify the product and service offered on its websites. The Respondent also claims to be in compliance with the Oki Data criteria and to be acting in good faith without confusing consumers, because it has included a disclaimer at the bottom of its website at "www.miradry.clinic". The correspondence between the Parties submitted by the Respondent does not mention the registration of any domain names by it or the use of the MIRADRY trademark. The Respondent submits a document showing the purchase of the Complainant's miraDry console and associated materials that was made by the Cosmebeaute clinic on September 30, 2020. There is however no evidence of any relationship between the Respondent and the Cosmebeaute clinic, so the Panel cannot reach a conclusion as to whether on this basis the Respondent can be regarded as actually providing the Complainant's miraDry procedure nor whether the Respondent's alleged provision of such services was done with the consent or knowledge of the Complainant. Nevertheless, even if the Respondent (in conjunction with the Cosmebeaute clinic) is regarded as actually providing the Complainant's miraDry procedure or if the Parties have had prior dealings between themselves, this is not by itself sufficient to establish that the Respondent has rights or legitimate interests in respect of the disputed domain names. For this to be so, the Respondent's conduct must generally accord with the Oki Data criteria. As discussed in section 2.8.1 of the WIPO Overview 3.0, Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark page 7 to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the "Oki Data test", the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and (iv) the respondent must not try to "corner the market" in domain names that reflect the trademark. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant's trademark. As discussed above, the evidence submitted by the Respondent does not support a conclusion for the existence of such an express consent by the Complainant, even if the Respondent is presumed to be connected to the Cosmebeaute clinic. As further discussed in section 2.8.2 of the WIPO Overview 3.0, cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., "parts", "repairs", or "location"), whether at the second-level or the top-level. Both of the disputed domain names in effect follow this pattern, as they include the ".clinic" gTLD. The evidence submitted by the Complainant shows that the Respondent's websites at the disputed domain names advertise the provision of miraDry treatments with the following phrases: "The Official miraDry Clinic", "Book a Free Consultation with Global Ambassador of miraDry", "First and Only Diamond Provider in the UK", "Only 1 of 2 Clinic in Europe to achieve Diamond Status in 2019", "No. 1 Clinic in Europe, October 2019 for treatments completed", "Our Consultant Doctor appointed as Leading Global Expert on miraDry", "Why we're the No.1 provider of miraDry in Europe", "miraDry Specialist", "Ask the leading expert on miraDry", "Ask Our Doctor, Global Ambassador miraDry", "Beware of Copycat providers ! We are the Only Official miraDry Clinic in the UK". The Complainant claims that all these statements are false. The Respondent does not deny that these statements have been displayed on its websites. Actually, it does not address these statements at all in the Response and does not submit any evidence showing them to be true. In addition, there is no explanation how the Respondent's websites claim that the clinic advertised on them could be "Only 1 of 2 Clinic in Europe to achieve Diamond Status in 2019" and "No. 1 Clinic in Europe, October 2019 for treatments completed", if, as claimed by the Respondent, the purchase of the miraDry console referred to by it was only made in September 2020. In addition, the Respondent's websites claim "[.] We are the Only Official miraDry Clinic in the UK", but the printout from the Complainant's website submitted by the Respondent shows that in addition to Cosmebeaute, four other clinics in the same area around London are also officially listed as authorized to provide miraDry treatments. In view of this, the statements on the Respondent's websites appear to be false or misleading. The Respondent also claims to have included a disclaimer on its websites and cites the following message displayed on the website at the disputed domain name : "miraDry clinic is a provider of miraDry treatments. miraDry is the registered trade mark of miraDry Inc." This message however does not distinguish between "miraDry Clinic" (in view of the Respondent's explanations this is probably the Cosmebeaute clinic) and "miraDry Inc." (the Complainant), and does not state that the two are unrelated. In addition, the archived versions of the Respondent's website at "www.miradry.clinic" for the period until March page 8 28, 2022, that are available at the Wayback Machine do not contain the statement referred to by the Respondent, and it is included only in the archived version of August 28, 2022. This shows that the Respondent has included it only recently, and possibly after becoming aware of the present dispute. However, even if it had included it earlier, that message alone, displayed after all the other misleading statements discussed above, has very little weight and may well remain unnoticed, given the lack of proper differentiation between the entities referred to in it. Moreover, "irrespective of whether a respondent's use of a domain name satisfies the Oki Data test, a domain name comprising solely a complainant's mark or marks, will generally be considered inherently misleading as Internet users are apt to associate the domain name specifically with the complainant and not with a third party provider of goods and/or services connected with it". See, Altro Limited v. 1&1 Internet Limited / Carvalet.Co.UK Limited / Matt Williams, WIPO Case No. D2022-2463. Taking the above into account, the Panel concludes that the Respondent has not accurately disclosed its relationship with the Complainant. Rather, it appears that with the registration and use of the disputed domain names the Respondent has taken steps to mislead Internet users that it is an official provider of miraDry treatments endorsed by the Complainant - and even more: the only such provider in the United Kingdom (which, according to the Respondent's own printout of the Complainant's site, is not true). As evident from the discount offered on the Respondent's websites, this was done for financial gain. The above leads the Panel to the conclusion that the Respondent's conduct does not support a finding of rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location." As discussed above in this decision, the disputed domain name is identical to the MIRADRY trademark, while the disputed domain name is confusingly similar to it. They have been used for almost identical websites that have displayed the MIRADRY trademark and offered miraDry treatments with false or misleading statements such as "the Only Official miraDry Clinic in the UK" and "No. 1 provider of miraDry in Europe", without including a proper disclaimer for the lack of relationship between the Parties. As evident from the discount offered on the Respondent's websites for the advertised miraDry treatments, the Respondent offers them for financial gain. This leads the Panel to the conclusion that the Respondent has targeted the Complainant with the page 9 registration and use of the disputed domain names in an attempt to unfairly capitalize on the Complainant's goodwill for commercial gain by attracting to its websites Internet users and misleading them that the services offered there are affiliated with or authorized by the Complainant. This satisfies the Panel finds that the disputed domain names were registered and are being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to the Complainant. /Assen Alexiev/ Assen Alexiev Sole Panelist Date: September 16, 2022
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