ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION GlaxoSmithKline Consumer Healthcare (UK) IP Limited v. satish jamgade Case No. D2023-0773 1. The Parties The Complainant is GlaxoSmithKline Consumer Healthcare (UK) IP Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is satish jamgade, India. 2. The Domain Name and Registrar The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2023. On February 22, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2023, 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. 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 of the Complaint, and the proceedings commenced on February 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2023. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 21, 2023. 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. page 2 4. Factual Background The Complainant, GlaxoSmithKline Consumer Healthcare (UK) IP Limited, is a subsidiary of GSK plc, the well-known United Kingdom multinational pharmaceutical and biotechnology company. The Complainant holds GSK plc's trademarks for the term HALEON. GSK plc was formed in 2000 after the merger of Glaxo Wellcome plc and SmithKline Beecham plc. It has since become one of the top 10 pharmaceutical companies in the world, generating a turnover of GBP 34 billion in Fiscal Year 2021. On February 22, 2022, GSK plc publicly announced the brand name of its new consumer healthcare corporate spin-off, HALEON. The completion of the demerger and listing of Haleon plc shares on the London Stock Exchange occurred in July 2022. Global media covered the announcement of the HALEON brand occurred with effect from February 22, 2022. The term HALEON is a coined amalgamation of an old English word "Hale", meaning "in good health", and "Leon", which is associated with the word "strength". According to the Complaint, Haleon plc is listed on the London Stock Exchange. It is also listed on the New York Stock Exchange. It has a market valuation of approximately GBP 30.5 billion Haleon plc uses the HALEON brand in the string of the main domain name and website for its new consumer healthcare division: "www.haleon.com". This website is used to inform online users of the HALEON brand, including job vacancies for roles located in various countries. Haleon plc owns and sells multiple well-known brands such as Sensodyne, Aquafresh, and Centrum, among others. The Complainant has a number of registered trademarks for the term HALEON, covering several jurisdictions: - United Kingdom registration no. UK00003726732 registered on March 11, 2022. - Mexican trademark no. 2355199 registered on February 10, 2022. - United Arab Emirates trademark, no. 365656, registered on March 16, 2022. The disputed domain name was registered on February 23, 2022. It currently resolves to a web page with ads. 5. Parties' Contentions A. Complainant The Complainant requests that the disputed domain name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. First, the Complainant submits that the disputed domain name is identical or confusingly similar to the HALEON trademark registrations of the Complainant. Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name. Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith. With respect to bad faith the Complainant states the following: page 3 - The facts of this case show that the Respondent targeted the HALEON brand when registering the disputed domain name on February 23, 2022, the day following the Complainant's global announcement pertaining to such trademark. In particular, the Complainant highlights the following points: (i) the Complainant's public announcement of the HALEON mark received largescale media coverage, being circulated in major news publications around the world, (ii) the top results for basic Google searches of "haleon", both on February 23, 2022 and at present, clearly pertain to the Complainant's HALEON brand, (iii) the HALEON mark is a distinctive and coined term that lacks generic meaning, and the Respondent's registration of this term in conjunction with the sector relevant addition "health partners" presents further evidence of its awareness of, and attempt to capitalize on, the Complainant's HALEON brand. The Complainant submits that, given the evidence elucidated above, it is clear that the Respondent knew of the Complainant's protected rights in the HALEON mark (which, as a trademark, had been applied for since November 2021 and was registered weeks prior to the registration of the disputed domain name) and sought to target such in bad faith. The timing of the Respondent's registration of the disputed domain name, combined with the distinctiveness of the Complainant's mark and ease with which any Internet user can find said mark online, clearly show that it was obtained with a view to capitalizing on the Complainant's rights. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that: (i) the 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 such 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. Based on the available record, the Panel finds 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 entirety of the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms like "health" or "partners" 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. page 4 Based on the available record, 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. While 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 often impossible 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. 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. Having reviewed the 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. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the disputed domain name. Based on the available 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 Panel considers that the record of this case reflects several elements related to the registration and use in bad faith. First, the Respondent was aware of the Complainant and is mark because the Complainant states that the Respondent previously signed a settlement agreement with the Complainant in respect of the similarly-constructed registration in which he agreed not to maintain domain names identical or similar to any trademark of the Complainant. page 5 In registering the disputed domain name, the Respondent included the term "health" to the disputed domain name, a term related to the Complainant's line of business. The Panel cannot find any plausible explanation for a good faith registration of the disputed domain name given that "haleon" is a coined term with no independent meaning and the registration occurred only one day after GSK plc announced the demerger of part of its business under the name Haleon (see also GlaxoSmithKline Consumer Healthcare (UK) IP Limited v. Sam Liu, WEBFX EMEA LIMITED, WIPO Case No. D2022-3705). The disputed domain name had been advertised for sale. The most likely inference is that the Respondent speculatively registered the disputed domain name which corresponded to the newly chosen name of the demerged business and then hoped to sell the disputed domain name to the business owner, for valuable consideration likely in excess of his out-of-pocket costs. That amounts to evidence of registration and use in bad faith within paragraph 4(b)(i) of the Policy. Finally, the Respondent satish jamgade was a party in another proceeding where it was held that he acted in bad faith in registering the domain name (see Cathay Pacific Airways Limited v. Satish Jamgade, WIPO Case No. DES2016-0010). Based on the available record, the Panel finds the third element of the Policy has been established. 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 be transferred to the Complainant. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: April 4, 2022
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