Haleon UK IP Limited v Rich Seeley

WIPO Case No. D2024-0422

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Haleon UK IP Limited v. Rich Seeley

Case No. D2024-0422

1. The Parties

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

Kingdom.

The Respondent is Rich Seeley, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <haleoninc.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2024. On January 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 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 (Contact Privacy Inc. Customer 7151571251) and contact

information in the Complaint. The Center sent an email communication to the Complainant on February 5,
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

February 6, 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 February 7, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 27, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 5, 2024.

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The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 12, 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 a British multinational consumer healthcare company, which was known as GlaxoSmithKline Consumer Healthcare (UK) IP Limited until it changed its name to Haleon UK IP Limited in April 2023. The Complainant is one of the world’s largest consumer healthcare companies, selling its products in association with various well-known brands (such as ADVIL and CENTRUM) in more than 100 different countries. With more than 24,000 employees, the Complainant carries on business on a global basis. The adoption of HALEON as the new corporate brand was announced on February 22, 2022, and received international media attention via The Guardian, Forbes and Bloomberg. HALEON was a coined term, combining “hale” and “leon”.

The Complainant owns various trademark registrations including the following word marks in the jurisdictions and classes noted:

HALEON International Registration Number 1674572, Registration Date November 29, 2021

Class(es) Covered 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, 44

HALEON Mexico Registration Number 2355199, Registration Date February 10, 2022

Class Covered 36

HALEON United Kingdom Registration Number UK00003726732, Registration Date March 11, 2022

Class(es) Covered 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, 44.

The Complainant also owns the domain name <haleon.com> in association with its principal website, which
attracts significant traffic, exceeding 100,000 visits per day. In terms of social media presence, the
Complainant has active platforms on Facebook, Instagram and LinkedIn.

The Respondent registered the disputed domain name on October 6, 2022, but it remains inactive, resolving to a message that states “[t]his site can’t be reached.” The Respondent did not reply to a cease-and-desist letter sent by the Complainant in July 2023.

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 Respondent has engaged in a pattern of bad faith misconduct, targeting multiple owners of well-known trademarks by registering domain names which replicate those marks. In particular, the Complainant points to two prior panel decisions against the Respondent, where the disputed domain names in question consisted of a recognizable mark combined with the term “inc”, the common abbreviation for “incorporated.” It is submitted that exactly the same pattern of misconduct has been undertaken by the Respondent in this matter, and that this constitutes strong evidence of bad faith.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which
the Complainant has rights;
(ii) The Respondents have no rights or legitimate interest in respect of the disputed domain name; and

(iii) The 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.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the disputed domain name includes the additional term “inc”, the Panel finds the addition of such term 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 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.

The Complainant has established a plausible prima facie case by bringing forward evidence and prominently features and reproduces the distinctive HALEON mark and the addition of the word “inc’ only serves to increase the risk of implied affiliation (see Asurion, LLC v. Else Woods, WIPO case No. D2023-4583).

submissions on the following points: (1) the Respondent has never been associated in any way with the
Complainant nor has he ever been authorized to use the HALEON mark; (2) there is no evidence that the

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

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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 has engaged in a pattern of bad faith conduct under paragraph 4(b)(ii) of the Policy. The Complainant has put forward clear evidence that the Respondent has registered and used domain names comprised of other well-known trademarks, and has actually been found to have acted in bad faith in at least five other UDRP decisions. In two of those prior decisions, the Respondent adopted a highly similar method of replicating a trademark and adding the same corporate

identifier “inc” as was chosen in this proceeding, namely <michelininc.com> and
<heavenhillsdistilleriesinc.com>. See, for example, Heaven Hill Distilleries, Inc. v. Contact Privacy Inc.
Customer 12410197688 / Rich Seeley, WIPO Case No. D2021-2806; Compagnie Générale des
Etablissements Michelin v. Rich Seeley, WIPO Case No. D2023-1366; and Belmont Village, L.P. v. Rich
Seeley, WIPO Case No. D2023-2269.

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. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the

circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, particularly the fact that HALEON is a coined word, 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.

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 <haleoninc.com> be transferred to the Complainant.

/Christopher J. Pibus/
Christopher J. Pibus
Sole Panelist
Date: March 25, 2024