ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Haleon UK IP Limited v. shi lei, Shi Lei Case No. D2023-4704 1. The Parties The Complainant is Haleon UK IP Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is shi lei, Shi Lei, China. 2. The Domain Name and Registrar The disputed domain name ("Disputed Domain Name") is registered with Dynadot Inc (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2023. On November 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2023, 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 (Redacted for Privacy, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2023, 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 November 15, 2023. 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 November 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2023. page 2 The Center appointed Ezgi Baklacı Gülkokar as the sole panelist in this matter on December 26, 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. 4. Factual Background The Complainant is a British multinational consumer healthcare company established in July 2022 as a corporate spin-off from GSK plc. Although it remains the same entity, GlaxoSmithKline Consumer Healthcare (UK) IP Limited, publicly announced the launch of the Complainant, under the HALEON name, on February 22, 2022, as evidenced in Annex 6 and changed its name to Haleon UK IP Limited on April 14, 2023, as reflected in the United Kingdom's Companies House evidenced in Annex 4. The Complainant is the owner of the "HALEON" trademark registrations before World Intellectual Property Organization ("WIPO") and different jurisdictions. Some of these HALEON trademarks include: International trademark registration No. 1674572, registered on November 29, 2021, in International Classes 03, 05, 09, 10, 21, 29, 30, 32, 35, 36, 41, 42, and 44; Mexico trademark registration No. 2355199, registered on February 10, 2022, in International Class 36; United Kingdom trademark registration No. UK00003726732 registered on March 11, 2022, in International Classes 03, 05, 09, 10, 21, 29, 30, 32, 35, 36, 41, 42 and 44; and United Arab Emirates trademark registration No. 365656, registered on March 16, 2023 in International Class 41, as evidenced in Annex 11 of the Complaint. The Complainant utilizes the HALEON trademark as part of its brand logo and it has established a social media presence and uses the HALEON trademarks extensively to advertise HALEON offerings, events and developments. The Complainant uses the HALEON trademarks and logo on different social media platforms such as LinkedIn, Instagram, Facebook, and Twitter (X), as evidenced in Annex 12 of the Complaint. The Complainant holds and uses the domain name that includes the HALEON trademark and is used as the primary website of the Complainant to inform Internet users of the HALEON offerings. The Complainant's website also advertises job vacancies for roles based in a wide variety of countries and received an average of more than 180.000 visits between December 2022 and February 2023 as evidenced in Annex 10. The Disputed Domain Name was registered on May 31, 2023, as evidenced with the Annex 1 of the Complaint. It resolves to a parking page which directs visitors to advertisements and third-party websites as evidenced in Annex 13. The Respondent in this matter was initially masked by a privacy service but then was revealed to be shi lei, Shi Lei, and is reportedly based in China. 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 each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, as follows: Identical or confusingly similar The Complainant argues that the Disputed Domain Name fully incorporates and is confusingly similar to HALEON trademarks, the sole difference being the addition of the generic and descriptive terms "my" and "reward" and fails to distinguish the Disputed Domain Name from the Complainant's trademark. page 3 The Complainant also indicates that it owns registered trademarks for HALEON which cover multiple jurisdictions and has become a distinctive identifier with respect to its offering of consumer healthcare products as a result of the extensive media recognition it has attained under the HALEON brand since its public announcement on February 22, 2022. The Complainant also contends that the Generic Top-Level Domain ("gTLD") ".com" in the Disputed Domain Name is a standard registration requirement and that the extension is not to be taken into account when comparing a disputed domain name to the Complainant's trademarks. Rights or legitimate interests The Complainant argues that the Respondent has no rights and legitimate interests in the Disputed Domain Name, has no affiliation with the Complainant, and the Complainant has not given the Respondent permission to register and/or use the Complainant's trademarks in any manner. In addition, the Complainant argues that the Respondent is not known by the Disputed Domain Name and the Complainant submits that the Respondent is not authorized to use the Complainant's trademark, nor the Respondent is the licensee of the mark. Furthermore, the Respondent has neither made use of the domain name nor engaged in any demonstrable preparations to use it in connection with a bona fide offering of goods or services, instead the Respondent is using the Disputed Domain Name to resolve Internet users to a PPC or monetized parking page that includes a number of advertising links as evidenced with the Annex 13. The Complainant also argues that some of the links refer to products offered in the oral health and medication sectors, both of which are areas the Complainant operates. Further, the Complainant argues that the Respondent is using the Disputed Domain Name to divert Internet traffic to the Complainant's website, creating a false impression that the Disputed Domain Name is a domain name of the Complainant and attract and mislead Internet users. The Complainant iterates that the Respondent's activities create a likelihood of confusion regarding source, and the Complainant further argues that such uses cannot be accepted within the scope of noncommercial or fair use. The Disputed Domain Name was registered and used in bad faith The Complainant initially argues that HALEON trademark registrations predate the creation date of the Disputed Domain Name, and since any average internet user has access to HALEON trademark registrations, as they can be found on public trademark databases, the Respondent should be presumed to have known or should have known the Complainant's trademarks. The Complainant also argues that the Respondent has knowingly registered the Disputed Domain Name in order to create an impression of an association with the Complainant. The Complainant emphasizes the Respondent's exploitation of the Disputed Domain Name, to resolve Internet traffic to other websites and to attract and divert Internet users, for commercial gain, through its use of PPC links to various related or unrelated sites and services, as demonstrative of bad faith registration and use under the Policy. The Complainant cites in support of its claims various previous UDRP decisions. Further the Complainant claims that the use of the Disputed Domain Name for such activity is a view to commercial gain and the Complainant contends that such use cannot be considered in good faith. The Complainant also emphasizes that the Respondent failed to respond to a notice sent by the Complainant to resolve the matter amicably on June 23, 2023 as evidenced in Annex 16, which further reinforces the inference of bad faith registration and bad faith use following. Further, the Complainant page 4 submits that the presence of Mail exchanges ("MX records") (as evidenced in Annex 17) for email communications is evidence of bad faith as the Respondent could engage in harmful activity through email distribution, given the evidently implied affiliation with the Disputed Domain Name due to the Complainant's HALEON trademark. The Complainant cites in support of its claims various previous UDRP decisions. In summary, the Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the Disputed Domain Name is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (ii) 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. 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 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. "The applicable Top-Level Domain ("TLD") in a domain name (e.g., ".com", ". club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview 3.0, section 1.11. Here, the TLD ".com" may be disregarded. Although the addition of other terms "my" and "reward" 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. The Panel agrees that both "my" and "reward" elements are descriptive and generic which does not prevent the finding of confusing similarity, as the Complainant's trademark HALEON remains recognizable within the Disputed Domain Name. 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. page 5 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 Panel notes that there is no evidence showing that the Respondent holds any rights for the trademark or name HALEON. The Panel also notes that there is no evidence showing that the Respondent is authorized or licensed to use the Complainant's trademark. 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. The case file also does not contain any evidence that the Respondent has been commonly known by the Disputed Domain Name as an individual, business, or other organization. Further, the Panel notes that there is no evidence of the Respondent's use of, or preparation to use, the Disputed Domain Name; and there is also no evidence that the Respondent is making a legitimate noncommercial or fair use under the Disputed Domain Name. On the contrary, what the evidence submitted by the Complainant establishes, is that the Disputed Domain Name resolves Internet users to websites that contain PPC links that presumably results in click-through revenue for the Respondent's financial gain. Also, it is noted that in some cases, the Disputed Domain Name resolves to a parking page which directs visitors to advertisements and third-party websites. Previous UDRP panels have categorically held that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. The Panel finds that such conduct cannot by any means be accepted as legitimate noncommercial or fair use activity, or a bona fide offering of goods and services, within the scope of the Policy. 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. In the present case, the Panel notes that the Respondent more likely than not was aware of the trademark HALEON, as the Complainant's trademark registrations predate the registration date of the Disputed Domain Name. According to the evidence submitted by the Complainant, the Panel finds that the Respondent knew or should have known about the Complainant's rights (and such information could readily have been reached by a quick online search; see Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). page 6 In addition, previous UDRP panels have held that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4). The Disputed Domain Name, especially considering that it identically includes the Complainant's trademark, is so obviously connected with the Complainant and its products that already its very registration by the Respondent, which has no connection with the Complainant, clearly suggests the Disputed Domain Name has been selected with a deliberate intent to create an impression of an association with the Complainant (see General Motors LLC v. desgate., WIPO Case No. D2012-0451). In addition, the Panel finds the fact that the Respondent intentionally diverted Internet traffic to third-party websites for financial gain shows clear bad faith (see Minerva S.A. v. Domain Administrator, See PrivacyGuardian.org llc, WIPO Case No. D2023-3986). Further, the evidence on the record provided by the Complainant shows that the Respondent has set up MX records for the Disputed Domain Name, meaning that currently it might be being used for, or in the future may be used for, email phishing communication. The Panel also notes that the failure of the Respondent to respond to the notice letter sent by the Complainant on June 23, 2023, may further reinforce the inference of bad faith registration and bad faith use (see Sanofi-Aventis v. Above.com Domain Privacy/Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634). Based on the available record, 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 be transferred to the Complainant. /Ezgi Baklacı Gülkokar/ Ezgi Baklacı Gülkokar Sole Panelist Date: January 9, 2024
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