Haleon UK IP Limited v 周舜伟 (Zhoushunwei)

WIPO Case No. D2024-3255

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Haleon UK IP Limited v. 周舜伟 (Zhoushunwei)

Case No. D2024-3255

1. The Parties

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

Kingdom.

The Respondent is 周舜伟 (Zhoushunwei), China.

2. The Domain Name and Registrar

The disputed domain name <haleon.xyz> is registered with Xiamen ChinaSource Internet Service Co., Ltd.

(the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On August 9, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On August 10, 2024, the Respondent requested that the Complaint be translated into Chinese. On August 12, 2024, the Complainant confirmed its request that English be the language of the proceeding.

The Center verified that the 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 in English and Chinese of the Complaint, and the proceedings commenced on August 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2024. The Center received another email communication on August 20, 2024 from the email address the username “aokiracom” listed on the

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website previously associated with the disputed domain name, requesting that the Complaint be translated
into Chinese. On September 12, 2024, the Center informed the Parties that it would proceed with panel
appointment.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 25, 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.

On September 27, 2024, the Panel informed the Center that it had received an email communication from “Anonymousemail” with the case number and disputed domain name in the subject line. The Panel is mindful of paragraph 8 of the Rules that “[n]o Party or anyone acting on its behalf may have any unilateral communication with the Panel.” Therefore, the Panel deleted this email communication without opening it.

4. Factual Background

The Complainant is a consumer healthcare company that was established in 2022 as GlaxoSmithKline Consumer Healthcare (UK) IP Limited. Its parent company, GSK plc, announced on February 22, 2022 that the Complainant would be called “Haleon” and this announcement was reported widely. The Complainant was subsequently listed on the London and New York stock exchanges. It owns brands in five market categories: oral health; vitamins, minerals, and supplements; pain relief; respiratory health; and digestive health and other. It holds multiple trademark registrations, including International trademark registration number 1674572 for HALEON, registered on November 29, 2021, designating multiple jurisdictions, including China, and specifying goods and services in multiple classes. That trademark registration is current. The Complainant changed its company name to Haleon UK IP Limited on April 14, 2023. The Complainant has registered the domain name <haleon.com> that it uses in connection with a website where it provides information about itself and its products. The Complainant also operates social media accounts under the name Haleon.

The Respondent is an individual based in China.

The disputed domain name was registered on May 13, 2024. According to evidence provided by the Complainant, on July 2, 2024 it was listed for sale on a domain name broker website for USD 1,900. As at July 29, 2024, the disputed domain name resolved to a webpage displaying a notice reading “COME SOON” with a contact email address. As at July 31, 2024, the disputed domain name resolved to a website that appeared to mirror a website for a Japanese veterinary service. At the time when the Complaint was filed, the disputed domain name resolved to a webpage displaying a notice in English, Chinese and Japanese that “This website is a personal non-profit blog. If you have any cooperation intentions, please send an email”, accompanied by a contact email address. At the time of this Decision, the disputed domain name no longer resolves to any active website; rather, it is passively held.

The Complainant sent a cease-and-desist letter on July 2, 2024 to the Registrar for forwarding to the
Respondent, and via the Registrar’s WhoIs contact form respectively.

According to evidence presented by the Complainant, the Respondent’s contact email address in the Registrar’s WhoIs database is also associated with the following domain names identical or similar to third party brands: <otbchina.com>, <paxworld.cn>, and <rongbang.xyz>; while the contact email address displayed on the “COME SOON” webpage formerly associated with the disputed domain name is displayed on near-identical “non-profit blog” style webpages associated with the domain names <coca-cola.xyz> and <expedia.xyz>.

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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 disputed domain name is identical to its HALEON mark. The domain name was registered and is being used in bad faith.

B. Respondent

The Respondent alleged that the disputed domain name is not under his name and requested that the webpage associated with the disputed domain name.

6. Discussion and Findings

6.1 Procedural Issues

A. Identity of the Respondent

The Respondent alleges that the disputed domain name is not under his name but, rather, under the name of the person who uses the contact email address displayed on the webpage formerly associated with the disputed domain name, indicating “This website is a personal non-profit blog”.

The Panel notes that the Registrar has verified that the holder of the disputed domain name is indeed the Respondent. On August 20, 2024, the Center received an email communication from the username “aokiracom” claiming to be the owner of the disputed domain name. Based on the available record, it is unclear how the person with the username “aokiracom” is connected to the Respondent, but the Panel does note the email address with the username “aokiracom” was displayed on the website at the disputed domain name when the Complaint was filed. For the record, the Panel also notes that the Center notified the Complaint in English and Chinese to various email addresses, including the contact email address with the username “aokiracom” displayed on the webpage formerly associated with the disputed domain name. The email communications received from the Respondent and the email address with the username “aokiracom” both include a request for a translation of the Complaint into Chinese with no substantive content, which have been considered by the Panel when determining the language of the proceeding.

B. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the webpage formerly associated with the disputed domain name contained a notice in English; the Respondent’s contact email address is associated with other domain names in English; and translation of the Complainant would incur additional expense and unnecessary delay.

The Respondent alleges that he does not understand English and requests that the Complaint be translated. As mentioned above, a similar request was received from the email address with the username “aokiracom”.

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The Panel takes note that the webpages associated with the disputed domain name have been in English, among other languages, which gives the Panel reason to believe that the Respondent and the person with the username “aokiracom” are able to communicate in English.

In exercising its discretion to use a language other than that of the registration agreement, 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) 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. See WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the HALEON trademark for the purposes of the Policy. See
WIPO Overview 3.0, section 1.2.1.

The entirety of the HALEON mark is reproduced within the disputed domain name. The only additional element is a generic Top-Level Domain (“gTLD”) extension (“.xyz”) which, as a standard requirement of domain name registration may be disregarded in the assessment of identity or confusing similarity for the

purposes of the Policy. Accordingly, the disputed domain name is identical to the mark for the purposes of

the Policy. See 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

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evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0,
section 2.1.

In the present case, the disputed domain name has not resolved to a website offering goods or services, although it temporarily mirrored a commercial website associated with another domain name in the “.xyz” gTLD. At the time of this Decision, the disputed domain name is passively held. Accordingly, the Panel

does not consider that the disputed domain name has been used in connection with a bona fide offering of
goods or services within the terms of paragraph 4(c)(i) of the Policy.

The Registrar has verified that the Respondent’s name is “周舜伟” (Zhoushunwei), which does not resemble the disputed domain name. Nothing on the record indicates that the Respondent or the person with the username “aokiracom” has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.

At the time when the Complaint was filed, the disputed domain name resolved to a webpage claiming to be a personal non-profit blog website. However, nothing indicated that the webpage was a blog; in fact, there was no other content on it beyond a contact email address to receive “cooperation intentions”. Accordingly, the Panel does not consider that the disputed domain name has been used in a legitimate noncommercial or fair use manner within the terms of paragraph 4(c)(iii) of the Policy.

Moreover, the nature of the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

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.

Based on the record, 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. The first of these is as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs
directly related to the [disputed] domain name;”

The disputed domain name was registered in 2024, after the registration of the Complainant’s HALEON trademark, including in China, where the Respondent is based. HALEON is a coined term with no apparent meaning other than as a reference to the Complainant. The disputed domain name is identical to it, adding nothing but a gTLD extension. The Complainant has publicized its branding since its launch and prior to the registration of the disputed domain name. There is no explanation provided for the registration of the disputed domain name. The Respondent’s contact email addresses are associated with several other domain names identical or similar to third party brands (as shown in Section 4 above), indicating a pattern of conduct. In these circumstances, the Panel has reason to find that the disputed domain name was registered in bad faith with the intention to target the Complainant’s mark.

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As regards use, the disputed domain name has temporarily resolved to a coming soon webpage, mirrored a
commercial website, and resolved to a webpage that claimed to be a personal, non-profit blog but lacked any
content. However, the disputed domain name was listed for sale on a broker’s website for USD 1,900 prior
to the Complainant’s cease-and-desist letter, which appears more likely to be the primary purpose for which
it was registered. That amount is very likely to exceed the out-of-pocket costs directly related to the disputed
domain name. Accordingly, the Panel finds that these circumstances fall within the terms of paragraph 4(b(i)
of the Policy.

In addition, noting the distinctiveness of the Complainant’s trademark, composition of the disputed domain name, and the Complainant’s domain name <haleon.com>, the current non-use of the disputed domain name does not change the Panel’s finding of the Respondent’s bad faith. See WIPO Overview 3.0, section 3.3.

Therefore, 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 <haleon.xyz> be transferred to the Complainant.

/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: October 8, 2024