Haleon UK IP Limited v Domain Privacy

WIPO Case No. D2024-4060

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Haleon UK IP Limited v. Domain Privacy

Case No. D2024-4060

1. The Parties

The Complainant is Haleon UK IP Limited, United Kingdom, represented by SafeNames Ltd., United

Kingdom.

The Respondent is Domain Privacy, Cyprus.

2. The Domain Name and Registrar

The disputed domain name <haloen.com> is registered with SNAPNAMES, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2024. On October 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2024, 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 (Perfect Privacy LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 8, 2024.

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 the Respondent of the
Complaint, and the proceedings commenced on October 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 30, 2024.

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The Center appointed Zineb Naciri Bennani as the sole panelist in this matter on November 5, 2024. 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 an English company incorporated in the United Kingdom since July 2022 as a corporate
spin-off from GSK plc. GlaxoSmithkline Consumer Healthcare IP Limited changed its name to Haleon UK

IP Limited in April 2023.

The Complainant sells healthcare products worldwide and declares making a revenue of GBP 11.3 billion in

2023. It is listed in the London Stock Exchange and the New York Stock Exchange.

The Complainant owns numerous trademarks registrations for HALEON including:

- International trademark registration number 1674572 registered on November 29, 2021, for various goods

and services related to healthcare.

- Mexican trademark registration number 2355199 registered on February 10, 2022, for charitable

fundraising, distribution of funds and grants for charitable purposes.

- United Kingdom trademark registration number UK00003726732 registered on March 11, 2022, for various

goods and services related to healthcare.

- United Arab Emirates trademark registration number 365656 registered in March 16, 2022, for education

services related to healthcare.

The HALEON term is a coined amalgamation or the words “Hale” and “Leon”.

The Complainant owns the following domain name: <haleon.com> that received 195,000 visits between
June and August 2024.

The Complainant advertises the HALEON trademark all over the world using Internet, various social media platforms, and the press.

The Complainant provided evidence of the above.

According to the WhoIs records, the disputed domain name was registered on April 28, 2024.

The disputed domain name displays Pay-Per-Click advertisement links that redirects to third party websites.

The Complainant sent a cease and desist letter to the Respondent on August 15, 2024.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the HALEON trademark is a distinctive identifier with respect of its offering of consumer healthcare products, with extensive media recognition since its public announcement

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on February 22, 2022.

According to the Complainant the disputed domain name differs from the HALEON mark by its inversion of the two adjoining letters “e” and “o”, commonly referred to as “typosquatting” which is a deliberate misspelling intended to emulate the Complainant’s mark.

The Complainant asserts that the disputed domain name is confusingly similar to the HALEON mark in which the Complainant has rights.

The Complainant asserts that the Respondent lacks a right or legitimate interest in the disputed domain name as it does not have any trademark rights to the term HALEON, “halogen” or any similar term.

The Complainant argues that the use of the disputed domain name to display Pay-Per-Click advertisement links that redirects users to third-party websites that offer unrelated services to the Complainant does not confer a bona fide offering of services since the disputed domain name capitalizes on the reputation and goodwill of the Complainant’s mark to which it is confusingly similar.

Moreover the Complainant contends that the Respondent is not known by the term “haleon” and that there is
no reason for the registration and use of the disputed domain name other than the movie of taking
advantage of the goodwill and reputation attached to the HALEON mark.

Therefore, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith.

According to the Complainant, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith, knowing that the HALEON trademark’s registration precede the disputed domain name’s registration and

that the trademark is famous, identifiable and publicly-accessible.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.

There are no exceptional circumstances within paragraph 5(f) of the Rules to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”.

This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

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the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy as it is the registrant of numerous trademark registrations for HALEON. WIPO Overview 3.0, section 1.2.1.

In the present case, the difference between the disputed domain name and the trademark HALEON is the inversion of the letters “e” and “o”.

A domain name which consists of a common, obvious, or intentional misspelling of a trademark, commonly referred to as “typosquatting”, is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

It is well accepted that “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (…) In the light of the above, it is the Panel’s view that the inversion of two adjoining letters of the disputed domain name <genyzme.com> in the case at hand (in which “y” follows “z” in the sequence of the letters) is to be considered as a common or obvious misspelling of the GENZYME trademark (in which “z” follows “y” instead). In fact, taking in consideration the English alphabet the letter “y” typically follows the letter “z” and their inversion is a common typing mistake. Furthermore, the misspelled term “genyzme” constitutes the only and therefore dominant element of the disputed domain name’s second level domain.” (Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193)

Therefore, the Panel finds the mark is recognizable within the disputed domain name and that the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section

1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In this case, there are no elements asserting that the Respondent uses the disputed domain name with a bona fide offering and the Respondent did not demonstrate a plan for such use as the disputed domain name displays a Pay-Per-Click page including an advertisement page that directs to third party websites selling a diversity of goods and services.

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Moreover, the Respondent is not commonly known by the disputed domain name, has no trademark the Respondent.
registration for the disputed domain name and does not demonstrate a legitimate noncommercial or fair use
of the disputed domain name. Further, the Panel finds that the typosquatting nature of the disputed domain
name is inherently misleading and Internet users will be unaware of such trivial misspelling and expect to
find the Complainant at the disputed domain name. As such, this purposeful composition reflects

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent uses the disputed domain name to display Pay-Per-Click advertisement page that directs to third party websites selling a diversity of goods and services.

The Complainant is widely known through Internet and different social media and press platforms. that its registration would be identical or confusingly similar to the Complainant’s mark.

The Respondent is not affiliated to the Complainant not it is known by the disputed domain name.

Moreover the trademark HALEON is an amalgamation of the word “hale” and the word “Leon” which makes it a distinctive and non-dictionary term. The fact that the disputed domain name is a one-letter variation of the trademark reflects the Respondent’s knowledge of the Complainant and intent to mislead Internet users

expecting to find the Complainant at the disputed domain name. The use for Pay-Per-Click advertising, as creating a likelihood of confusion with the Complainant’s mark.

referenced above, falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, namely that the

The Panel finds that the Complainant has established the third element of the Policy.

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 name <haloen.com> be transferred to the Complainant.

/Zineb Naciri Bennani/
Zineb Naciri Bennani
Sole Panelist
Date: November 14, 2024