Haleon UK IP Limited v 石磊 (Lei Shi)
WIPO Case No. D2023-3132
•20-10-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Haleon UK IP Limited v. 石磊 (Lei Shi)
Case No. D2023-3132
1. The Parties
Complainant is Haleon UK IP Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.
Respondent is 石磊 (Lei Shi), China.
2. The Domain Name and Registrar
The disputed domain name <haleonrewards.com> (the “Domain Name”) is registered with Cloud Yuqu LLC
(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2023. connection with The Domain Name. On July 24, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for The Domain Name which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to Complainant on August 10, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese regarding language of proceeding. Complainant filed an amended Complaint in English on August 16, 2023.
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 August 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2023.
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The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 6, 2023.
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
Complainant, formerly GlaxoSmithKline Consumer Healthcare (UK) IP Limited, is a British multinational
consumer healthcare company established in July 2022 as a corporate spin-off from GlaxoSmithKline plc.
GlaxoSmithKline Consumer Healthcare (UK) IP Limited changed its name to Haleon UK IP Limited on
April 14, 2023.
Complainant holds nine large-scale multinational power brands (including, for example, PRONAMEL,
CENTRUM and ADVIL) and 23 local growth brands. Complainant’s brands span five market categories,
including Oral Health, Vitamins, Minerals and Supplements (VMS), Pain Relief, Respiratory Health and
Digestive Health. With more than 24,000 employees globally, and offerings available in over 100 countries,
Complainant attained a revenue of GBP 10.9 billion in 2022.
Complainant owns numerous registered trademarks in numerous jurisdictions, for the HALEON mark, including:
| - | International registered trademark 1674572 for the HALEON word mark, registered on November 29, 2021; |
| - | Mexican registered trademark number 2355199 for the HALEON word mark, registered on February 10, 2022; |
| - | United Kingdom registered trademark number UK00003726732 for the HALEON word mark, registered on March 11, 2022; and |
| - | United Arab Emirates registered trademark number 365656, for the HALEON word mark, registered on March 16, 2022. |
Due to the recent change in company name, Complainant’s registered trademarks for HALEON are still listed under the name “GlaxoSmithKline Consumer Healthcare (UK) IP Limited” at the time of filing this Complaint.
Complainant also owns and operates its main website at “ which is used to inform Internet users of the HALEON offerings and for advertising job vacancies in a wide variety of countries.
The Domain Name was registered on February 9, 2023, and redirects to a Pay-Per-Click (PPC) webpage with links to third party websites, such as “Best Travel Insurance”, “Travel Insurance” and “Apply Business Card”.
Complainant sent a cease-and-desist letter to Respondent on May 9, 2023, setting forth its rights and the Domain Name, which designated an email server and enabled email communications in affiliation with the Domain Name.
requesting Respondent to cease use of the Domain Name. Respondent first responded on the same date by
offering to sell the Domain Name for USD 5,199. Two days later, Respondent offered to sell the Domain
5. Parties’ Contentions
A. Complainant
Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent
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registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for HALEON and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known HALEON products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in registering and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. Respondent
Respondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submitted its original Complaint in English. In its original Complaint and amended Complaint, Complainant submitted its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is
Chinese.
Complainant submits that neither Complainant nor its representative is familiar with Chinese; that the Domain Name is formed by Latin characters, with Complainant’s HALEON mark in its entirety, and the addition of an English term “rewards”; and that holding the proceeding in Chinese would cause considerable
extra expense and burden on Complainant, which causing delay to the proceedings.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel also notes that the Domain Name does not have any specific meaning in the Chinese language, and that the Domain Name contains Complainant’s HALEON trademark in its entirety, and the addition of the English word “rewards” to Complainant’s trademark in the Domain Name, all of which indicate that Respondent understands English. The Panel further notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding, nor did Respondent choose to file a Response in Chinese or English.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-
effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into
Chinese and to conduct the proceeding in Chinese.
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Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an
admission that the complainant’s claims are true.
Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership 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. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the HALEON trademarks, as noted above. Complainant has also submitted evidence, which supports that the HALEON trademarks are widely known and a source identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the HALEON trademarks.
With Complainant’s rights in the HALEON trademarks established, the remaining question under the first
element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in
which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark.
See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case
No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s HALEON trademarks. The use of
Complainant’s trademark in this entirety, with the addition of the term “rewards”, does not prevent a finding of
confusing similarity between the Domain Name and the HALEON trademark as it is recognizable in the
Domain Name.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its
HALEON trademarks, and does not have any rights or legitimate interests in the Domain Name.
Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or
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licensed to use the HALEON trademarks or to seek registration of any domain name incorporating the
trademarks. Respondent is also not known to be associated with the HALEON trademarks, and there is no
evidence showing that Respondent has been commonly known by the Domain Name.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or
services or a legitimate noncommercial or fair use. Rather, it reverts to a webpage with PPC links to third
party websites with products and services unrelated to Complainant’s business. Such use does not
constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot
under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name.
See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case
No. D2013-0875.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does
not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under
paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 website or location or of a product or
service on your web site or location.”
The Panel finds that Complainant has provided ample evidence to show that registration and use of the HALEON trademarks predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s HALEON trademarks and related products and services are widely known and recognized. Moreover, the addition of the term “rewards” to Complainant’s trademark in the Domain Name suggests activities potentially related to engaging in Complainant’s industry and activities. Therefore, Respondent was likely aware of the HALEON trademarks when he registered the Domain Name, or knew or should have known that the Domain Name was identical to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,
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WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan
Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property
Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
Further, the registration of the Domain Name incorporating Complainant’s HALEON trademark in its entirety suggests Respondent’s actual knowledge of Complainant’s rights in the HALEON trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the
Domain Name. Further, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Here, the addition of the term
“rewards” to Complainant’s trademark in the Domain Name suggests activities potentially related to engaging
in Complainant’s industry and activities.
Respondent registered and is using the Domain Name to confuse and mislead consumers looking for well- known HALEON products and services of Complainant or authorized partners of Complainant. The use of the HALEON trademarks in the Domain Name is intended to capture Internet traffic from Internet users who
are looking for Complainant’s products and services. The use of the Domain Name to divert users to the webpage with PPC links to third party websites, for commercial gain, by creating a likelihood of confusion with Complainant’s mark is in bad faith. In addition, Respondent’s activation of MX records for the Domain
Name may potentially result in Internet users receiving emails and phishing activity perceived to have originated from Complainant. Such activities may result in tarnishing Complainant’s reputation.
Respondent also offered the Domain Name for sale to Complainant for USD 5,199 and later for USD 2,000, in excess of out-of-pocket costs directly related to the Domain Name, demonstrating that Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant, for possible commercial gain.
Finally, the Panel also notes the reputation of the HALEON trademarks, and the failure of Respondent to submit a response to the Complaint or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Name may be put.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and
Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name <haleonrewards.com> be transferred to Complainant.
/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: October 20, 2023
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