Haleon UK IP Limited v Sophia

WIPO Case No. D2024-4041

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Haleon UK IP Limited v. Sophia

Case No. D2024-4041

1. The Parties

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

Kingdom.

The Respondent is Sophia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <haleongood.com> (the “Domain Name”) is registered with Alibaba.com

Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2024. On October 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2024, 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 (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 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 10, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 30, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 31, 2024.

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The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 7, 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 one of the world’s largest consumer health companies. Further, the Complainant is the proprietor of, inter alia, the following trademark rights.

- International Registration No 1674572 for the word mark HALEON (registered on November 29, 2021)
in inter alia classes 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, and 44.

- United Kingdom trademark No UK00003726732 for the word mark HALEON (registered on March 11,
2022) in inter alia classes 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, and 44.

- Mexican trademark No 2355199 for the word mark HALEON (registered on February 10, 2022) in
class 36.

The Domain Name was registered on the date indicated below:

- <haleongood.com>, July 15, 2024.

In July 2024, the Domain Name referred to a website which displayed the HALEON logo and several product images. At the time of filing the Complaint, the Domain Name referred to an inactive website. Currently, no changes have been made to the content of the Domain Name, which means that it continues to be used in the manner described above during the time of filing the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has met all the necessary elements under the Policy for the transfer of the

Domain Name.

The Complainant is the owner of nine major multinational power brands, including SENSODYNE,
CENTRUM, and ADVIL, as well as 23 local growth brands. These brands cover five market categories: Oral
Health, Vitamins, Minerals, and Supplements (“VMS”), Pain Relief, Respiratory Health, and Digestive Health,
and Other. In 2023, the Complainant generated a revenue of GBP 11.3 billion, with its products available in
over 100 countries. The Complainant employs more than 25,000 people. The HALEON brand is
prominently featured on the Complainant’s main website, “ which provides information
about HALEON’s offerings and advertises job vacancies in various countries. The website received an
average of over 180,000 visits between December 2022 and February 2023.

The Complainant holds various registered trademarks for the term HALEON in multiple jurisdictions and has received extensive media recognition under the HALEON brand since its public announcement on February 22, 2022. The Complainant argues that the Domain Name is confusingly similar to the HALEON mark, in

which it has established rights.

The Respondent has no rights or legitimate interests in the domain name. The Respondent has not been authorized, licensed, or given consent by the Complainant to register or use the HALEON trademark in any manner. The Respondent is not commonly known by the domain name and does not own any trademark for it. The Complainant asserts that the Respondent has not used, nor prepared to use, the Domain Name in

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connection with a bona fide offering of goods or services. Currently, the Domain Name does not resolve to an active website. The Respondent registered the confusingly similar domain name with the intent to profit from the Complainant’s trademarks by exploiting the goodwill and reputation associated with the HALEON mark. Additionally, the Respondent has attempted to misleadingly divert consumers for phishing and

distributing malicious software.

The Complainant’s HALEON trademarks predate the registration of the Domain Name in July 2024. These trademarks are clearly identifiable in publicly accessible trademark databases. The Complainant contends that the Respondent intentionally registered the Domain Name to target the Complainant’s brand. The

Domain Name carries a high risk of implied affiliation with the Complainant’s HALEON website. Given the confusing similarity to the HALEON mark, the Respondent’s interest in targeting the Complainant’s brand for monetization is the only plausible explanation for choosing such a domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Substantive Analysis

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or

service mark in which the Complainant has rights;

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

(iii) that 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 Domain Name, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has clearly demonstrated that it holds trademark rights in multiple jurisdictions for
HALEON, in respect of a trademark or service mark, for the purposes of the Policy, as stated in WIPO
Overview 3.0, section 1.2.1.

WIPO meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see, e.g., priceline.com LLC v. shilei, WIPO Case No. D2023-3038). In this case, the addition of the laudatory word “good” does not prevent a finding of confusing similarity between the HALEON trademark and the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy, as noted in WIPO Overview 3.0, section 1.7.

The Panel finds that the HALEON trademark is recognizable within the Domain Name. According to

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark
HALEON, and the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must first establish a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Once this is done, the burden of production shifts to the Respondent to provide evidence of its rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Although the overall burden of proof in UDRP proceedings lies with the

complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name can be challenging. This often involves “proving a negative,” which requires information primarily within the respondent’s knowledge or control. Therefore, when a complainant makes a prima facie
case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent
to present relevant evidence demonstrating such rights or legitimate interests (although the burden of proof
always remains with the complainant). Paragraph 4(c) of the Policy provides a list of circumstances under
which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. If the
respondent fails to provide such evidence, the complainant is deemed to have satisfied the second element
(see WIPO Overview 3.0, section 2.1).

Considering all the evidence presented and the Complainant’s allegations that the Respondent has no rights or legitimate interests in the Domain Name and is not entitled to use the HALEON trademark, the Panel concludes that the Complainant has established an prima facie case. The Respondent has not rebutted the Complainant’s prima facie showing and has not provided any relevant evidence demonstrating rights or legitimate interests in the Domain Name, as enumerated in the Policy or otherwise. Therefore, the conditions set forth in paragraph 4(a)(ii) of the Policy have been met by the Complainant. The composition of the Domain Name, which includes the Complainant’s trademark in its entirety along with the laudatory word “good”, creates a risk of implied affiliation with the Complainant and cannot confer any rights or legitimate interests on the Respondent.

The Panel therefore concludes that 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 certain circumstances which, 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 provides a non-exhaustive list of circumstances that may indicate bad faith registration and use of a domain name. However, other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (see WIPO Overview 3.0, section 3.2.1).

The Domain Name previously resolved to a website displaying the HALEON logo and the Complainant’s product images, to purportedly carry out fraudulent activity, which amounts to an intentional attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark, paragraph 4(b)(iv) of the Policy.

Moreover, panels have determined that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). After reviewing the available record, the Panel notes the distinctiveness of the Complainant’s trademark and the composition of the Domain Name. In this case, the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy.

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

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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 <haleongood.com> be transferred to the Complainant.

/Jonas Gulliksson/
Jonas Gulliksson
Sole Panelist
Date: November 21, 2024