Haleon UK IP Limited v Name Redacted

WIPO Case No. D2024-2875

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Haleon UK IP Limited v. Name Redacted

Case No. D2024-2875

1. The Parties

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

United Kingdom.

The Respondent is Name Redacted.

2. The Domain Name and Registrar

The disputed domain name <haleonusa.com> (the “Disputed Domain Name”) is registered with Realtime

Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2024. connection with the Disputed Domain Name. On July 16, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 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 July 17, 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 July 24, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 13, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 16, 2024.

The Center appointed Nicholas Weston as the sole panelist in this matter on September 1, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The Complainant is a British multinational consumer healthcare company established as a corporate spin-off from GSK plc in July 2022 under the name GlaxoSmithKline Consumer Healthcare (UK), and changed its name to Haleon UK IP Limited on April 14, 2023. The Complainant company holds registrations for the trademark HALEON and variations of it in numerous jurisdictions, including, for example, International Registration No. 1674572 for the mark HALEON, registered on November 29, 2021.

The Complainant owns the domain name <haleon.com>, which resolves to its main website.

The Respondent registered the Disputed Domain Name on March 4, 2024. It resolves to a parked page.

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 cites its trademark registrations in numerous countries for the mark HALEON, as prima facie evidence of ownership.

The Complainant submits that GSK plc publicly announced the launch of the Complainant, under the HALEON name, on February 22, 2022 and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name is comprised of the HALEON trademark and that the addition of the country or geographical term “usa” is not sufficient to avoid the confusing similarity to its trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that “there is no evidence showing that the Respondent has been using, or preparing to use, the Disputed Domain Name in connection with a bona fide offering of goods and services since its registration” and claims, in summary, that none of the circumstances set out in paragraph 4(c) of the Policy apply. It also submits that “lexical make-up of the Disputed Domain Name causes an impermissible risk of confusion among online users”.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and “substantial renown” of the Complainant’s trademark. The Complainant submits that the passive holding of the Disputed Domain Name would not prevent a finding of bad faith.

B. Respondent

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

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i)        that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      that the Disputed Domain Name has been registered and is being used in bad faith.

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 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. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark HALEON in numerous countries.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the HALEON trademark,
the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the
Complainant’s trademark HALEON; (b) followed by the country or geographical term “usa”, connoting the
United States of America; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “haleonusa”.

The Panel finds the entirety of the mark HALEON is reproduced within the Disputed Domain Name.
Accordingly, the Disputed Domain Name is confusingly similar to the marks for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

Although the addition of the term “usa” may bear on assessment of the second and third elements, the Panel
finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed

Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 Disputed 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.

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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 notes the evidence that the Disputed Domain Name resolves to a hosting provider parked page,
which supports the Complainant’s submission that the “the current use of the [Disputed] Disputed Domain
Name is not a legitimate noncommercial or fair use of a domain name according to many previous panel
decisions”, particularly having regard to the other factors cited by the Complainant that contend against the

Respondent having any legitimate rights or interests.

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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Name and the “substantial renown” of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark HALEON when it registered the Disputed Domain Name (see Haleon UK IP Limited v. Domain Admin, WIPO Case No. D2023-4934 (“[w]ell-known search engines list the Complainant’s brand and services as the first result in respect of searches for […] ‘HALEON’”); Haleon UK IP Limited v. 石磊 (Shi Lei), WIPO Case No. D2024-0730 (“[t]he Panel accepts that ‘haleon’ is a distinctive term and that the Complainant and its HALEON trade mark has gained sufficient fame and social media presence since its launch”); Haleon UK IP Limited v. 石磊 (Lei Shi), WIPO Case No. D2023-3132 (“the record shows that Complainant’s HALEON trademarks and related products and services are widely known and recognized”)).

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name
other than to target the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview
3.0, section 3.1.4.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Names resolves to a hosting provider parked page.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the Disputed Domain Name, and finds that in the circumstances of this case the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy.

Panels may take into account particular circumstances in assessing whether the respondent’s registration of a domain name is in bad faith, including: (i) the nature of the Disputed Domain Name such as here where a widely-known mark is used, and incorporating the additional geographical signifier “usa” that does nothing to

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registrant; and (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the Disputed Domain Name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant. WIPO Overview 3.0, section 3.2.1. In the circumstances, noting in particular the apparent identity theft associated with the registration of the Disputed	allay the potential for confusion, (ii) the chosen Top-Level Domain; (iii) the use of a third party’s name as constitutes bad faith under the Policy.
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 <haleonusa.com> be transferred to the Complainant.
/Nicholas Weston/ Nicholas Weston Sole Panelist Date: September 12, 2024