HeyGen Technology Inc. v Enrico Pellegrini

WIPO Case No. D2025-1223

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

HeyGen Technology Inc. v. Enrico Pellegrini

Case No. D2025-1223

1. The Parties

The Complainant is HeyGen Technology Inc., United States of America (“United States”), represented by

Coates IP LLP, United States.

The Respondent is Enrico Pellegrini, Italy.

2. The Domain Name and Registrar

The Disputed Domain Name <en-heygen.com> is registered with Register SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2025. On March 26, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Disputed Domain Name. On March 27, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (UNKNOWN RESPONDENT) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on March 27, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2025. The Respondent did not submit any Response. Accordingly, the Center notif ied the Respondent’s default on April 22, 2025.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 2, 2025. The Panel f inds 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

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4. Factual Background

The Complainant, HeyGen Technology Inc., is a Delaware corporation, founded in 2020 with headquarters in Los Angeles, United States of America. The Complainant creates photo-realistic avatars via user-submitted photos and videos as well as a library of pre-made avatars, using generative artif icial intelligence.

The Complainant is the owner of inter alia the following trademarks:

- HEYGEN, United States mark No. 7725074 registered on March 11, 2025, in class 42;

- HEYGEN, United Kingdom word mark No. UK00003940036 registered on October 27, 2023, in
classes 9 and 42;

- HEYGEN, European Union word mark No. 018908079 registered on December 26, 2023, in classes 9
and 42.

In September 2022, the Complainant launched a platform and services, using the HEYGEN sign, allowing users to create avatar videos or to translate and lip-sync videos. The Complainant also claims to operate the domain name <heygen.com>.

The Disputed Domain Name was registered on November 28, 2024. According to the Complainant’s evidence, the Disputed Domain Name resolves to a website displaying the term “HeyGen” multiple times, adding the following text: “HeyGen is a powerful online video creation platform that empowers individuals and businesses to produce high-quality videos effortlessly and in no time. With a versatile suite of tools and features, it supports various video formats, including marketing content, social media posts, presentations, and more, making it ideal for diverse needs.” The website displays a “Try HeyGen for FREE!” button below. The Disputed Domain Name currently resolves to the same website. Said website features terms and conditions that are presented as “Terms of Service for HeyGen.com” and which are almost identical to the terms of service on the website associated to the domain name <heygen.com>.

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 confusingly similar to the
Complainant’s HEYGEN trademark as it incorporates the trademark plus the additional term “en”, which is a
common abbreviation for “English” and does nothing to distinguish the Disputed Domain Name f rom the
Complainant’s trademark.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as the Respondent does not own any trademark registration, has no known connection to the Complainant, and has not received any authorization or license to use the HEYGEN trademark or include it in a domain name.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant:

- The Disputed Domain Name was registered well af ter the HeyGen products and the HEYGEN
trademark became well known and famous;

- The Disputed Domain Name resolves to a site that solely offers competing digital image and avatar products and services under the HEYGEN trademark, which clearly evidences the Respondent’s bad faith attempt to ride on the well-known status and fame of the HEYGEN mark; and

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- The Respondent’s copying of the Complainant’s terms and conditions, including the Complainant’s domain name <heygen.com> constitutes clear bad faith that the Respondent is attempting to deceive customers that it is in fact the Complainant.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

Based on the available record, 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 entirety of the HEYGEN mark is reproduced 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 addition of other terms (here, “en”) may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a f inding 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 f inds the f irst 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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

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.

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests af f iliation with the trademark owner. The correlation between a domain name and the complainant’s mark is of ten central to this inquiry.

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Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of WIPO Overview 3.0).

The Disputed Domain Name currently resolves to a website displaying the Complainant’s HEYGEN trademark, seemingly of fering services that are similar to the Complainant’s own of fering, and virtually identical terms of service. The Panel f inds that this does not amount to a bona f ide of fering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name. Moreover, the Respondent does not accurately and prominently disclose its (absence of) relationship with the Complainant. As a result, the Respondent fails the so-called “Oki Data test” for legitimate resellers, distributors or service providers of the Complainant’s goods or services.

The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Based on the available record, the Panel f inds 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 used the Disputed Domain Name displaying the Complainant’s HEYGEN trademark, a service description that is similar to the Complainant’s of fering, and terms of service that refer to the Complainant’s <heygen.com> domain name and which are virtually identical to the Complainant’s terms of service. In the Panel’s view, the circumstances of this case indicate that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and obtaining personal information f rom visitors. WIPO Overview 3.0, section 3.1.4.

In the present case, the Panel finds that the Respondent must have been aware of the Complainant and its trademark rights when it registered the Disputed Domain Name as:

- the Complainant’s HEYGEN trademark was registered prior to the Disputed Domain Name;

- the Disputed Domain Name resolves to a website displaying both the Complainant’s HEYGEN
trademark, refers to the Complainant’s own website, and seemingly of fering similar services.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name aimed at creating a risk of affiliation with the Complainant to acquire personal information from visitors.

Finally, the Respondent did not formally take part in the administrative proceedings. According to the Panel, this af f irms the Panel’s f inding of the Respondent’s bad faith.

Based on the available record, the Panel finds 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 Disputed Domain Name <en-heygen.com> be transferred to the Complainant.

/Flip Jan Claude Petillion/
Flip Jan Claude Petillion
Sole Panelist
Date: May 16, 2025