ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Haleon UK IP Limited v. Domain Admin Case No. D2023-4934 1. The Parties The Complainant is Haleon UK IP Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Domain Admin, Costa Rica. 2. The Domain Name and Registrar The disputed domain name is registered with DropCatch.com LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2023. On November 28, 2023, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On November 29, 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 January 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2024. This Panel notes that the Center has complied with all of its obligations to serve a formal notice of the Complaint on the Respondent through all known means and modes of communication but however, the Respondent did not submit any response within the stipulated deadline. Accordingly, the Center notified the Respondent’s default on January 29, 2024. The Center appointed Saisunder Nedungal Vidhya Bhaskar as the sole panelist in this matter on January 31, 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.
page 2 4. Factual Background - The Complainant, Haleon UK IP Limited, was formerly known as GlaxoSmithKline Consumer Healthcare (UK) IP Limited, which is a British multinational consumer healthcare company established in July 2022 as an independent entity for its consumer healthcare business by way of a corporate spin-off from GSK plc. - It is noted from the extant submissions made by the Complainant that the name of the Complainant was changed from GlaxoSmithKline Consumer Healthcare (UK) IP Limited to its present name viz., Haleon UK IP Limited on April 14, 2023. - The Complainant claims to be one of the world’s largest consumer health companies holding nine large-scale multinational power brands (including, for example, PRONAMEL, CENTRUM, and ADVIL) and 23 local growth brands as per the submissions in its Complaint. - It is further noted from the various documents and annexes submitted by the Complainant as part of its Complaint that the trade name and trademark “HALEON” was first adopted and used by Glaxo plc on February 22, 2022, when it announced through press releases and through various internationally-renowned publications such as The Guardian, Forbes, and Bloomberg, that it proposes to establish an independent entity for its consumer healthcare business by way of a corporate spin-off from GSK plc. - Accordingly, it can be noticed that the trade name and trademark “HALEON” came to be in first use by the Complainant’s predecessor as early as in February 2022. - The Complainant claims to hold trademark registrations or has applied for registration of the word HALEON and/or its associated label in various jurisdictions and under several classes as follows: Trademark Country Registration Number Registration Date Class(es) Covered HALEON International Registration under Madrid Protocol designating 70 countries 1674572 November 29, 2021 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, 44 HALEON Mexico 2355199 February 10, 2022 36 HALEON United Kingdom UK00003726732 March 11, 2022 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, 44 United Arab Emirates 365656 March 16, 2022 41 - That the Complainant also uses the trademark “HALEON” in the string of its main website, “www.haleon.com” and also promotes its goods and service offerings through various popular social media platforms such as LinkedIn, Facebook, Twitter, Instagram. - Thus, to summarise the Complainant claims to have adopted and is continuously using the trademark “HALEON” since at least February 2022. - The Complainant, through its legal representative on the August 29, 2023, caused a cease and desist notice to be issued on the Respondent herein (through the privacy service provider viz., NameBrightPrivacy.com), soon after the registration of the disputed domain name on August 14, 2023. It is pertinent to note that the Respondent did not reply to the aforesaid legal notice of the Complaint.
page 3 5. Parties’ Contentions A. Complainant 1. The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. 2. As regards the first element of the policy the Complainant contends that: - The registration of the disputed domain name is identical or confusingly similar to the Complainant’s trademark HALEON in which the Complainant has rights. In support of the contention the Complainant asserts that it is the rightful owner of the trademark HALEON across several jurisdictions around the globe as already noted in section 4 - Factual Background, which is not being repeated herein for the sake of brevity. - It has achieved extensive media coverage and recognition in relation to its use of the trademark and trade name HALEON since its adoption in February 2022 and thus, the HALEON mark has become a distinctive identifier with respect to its offering of consumer healthcare products. - The issue of ‘identical or confusingly similar’ for the purposes of deciding upon the first element of the UDRP should be adjudicated upon by utilising a side-by-side comparison to decide “whether the alphanumeric string comprising the challenged domain name is identical … or sufficiently approximates the trademark” in which the Complainant has rights and in this regard states that the disputed domain name plainly contains the Complainant’s HALEON trademark, in addition to the word ”global”. In this regard the Complainant relies upon the decision rendered under Advanced Magazine Publishers Inc. d/b/a Conde Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743. - The distinctive part of the disputed domain name is the Complainant’s HALEON mark, with the word “global” merely being a generic addition and that under the UDRP adding generic words onto a trademark does not negate similarity between a trademark and domain name as per WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” - The generic top-level domain “.com” featured in the disputed domain name does not negate a finding of “confusing similarity” under the first element as it is a standard registration requirement and in this regard, reliance is placed on WIPO Overview 3.0, Guideline 1.11. 3. Accordingly, for the aforesaid reasons the Complainant states that the disputed domain name is confusingly similar to the Complainant’s mark for the purposes of paragraph 4(a)(i), being the first element of the UDRP. 4. As regards the second element of the policy, the Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name for the below mentioned reasons: - To the best of the Complainant’s knowledge, the Respondent does not have any trademark rights, whether registered or unregistered to the term HALEON or any other term used in the disputed domain name and neither has it received any license from the Complainant to use domain names featuring the HALEON trademark. - The Complainant asserts that the Respondent has “neither used nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” and for this reason has inter alia failed to demonstrate a right or legitimate interest in the disputed domain name as per Paragraph 4(c) of the Policy.
page 4 - The Complainant states that since the Disputed Domain Name has continually resolved to a parked page comprising pay-per-click (‘PPC’) advertising links and since the PPC links capitalise on the reputation of the Complainant’s mark, as the distinctive portion of the disputed domain name is the word HALEON, which has no ordinary or dictionary meaning, it can be inferred that there is no bona fide offering of goods or services by the Respondent and in this regard reliance is also placed on WIPO Overview 3.0, Guideline 2.9. - It is further contended that the Respondent aims to attract Internet traffic through use of the distinctive HALEON name and in this regard the Complainant relies upon the decision under Sara Lee Foods, LLC v. Qais Satarzadh, WIPO Case No. D2015-0918 in relation to the use of a domain name to display PPC links, whereunder it was held that “the Respondent’s use of the Complainant’s trademark to attract Internet users to a website offering links to third-party websites is essentially a form of bait-and-switch selling, which is calculated to mislead Internet users. Such activities do not amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest” and hence the Complainant states that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Respondent’s use of the confusingly similar Disputed Domain Name, is intended to attract and mislead Internet users, which does not constitute bona fide use within the meaning of Paragraph 4(c)(i) of the Policy. - The Complainant contends that the Respondent is not known, nor has it ever been known, by ”haleon” or anything similar and that the Complainant’s HALEON mark is a distinctive, non-dictionary coined term and also that the Respondent is neither connected to nor affiliated with the Complainant and has not received license or consent to use the HALEON mark in any way. - Further the Complainant states that the mere ownership of the disputed domain name itself does not confer rights or legitimate interests on a respondent and in this regard places reliance upon the decision rendered under National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118. - Accordingly, it is stated by the Respondent that the use of the disputed domain name by the Respondent, is to misleadingly divert Internet users to unrelated sites through PPC links and clearly does not amount to either noncommercial (given the nature of PPC links) or fair use and hence for the aforesaid reasons it is contended by the Complainant that it has prima facie established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name for the purposes of Paragraph 4(a)(ii) of the Policy. 5. As regards the third element of the policy, the Complainant contends that the disputed domain name was registered and is being used in bad faith for the below mentioned reasons: - The Complainant states that the Respondent has both registered and used the disputed domain name in bad faith owing to the fact that the Respondent has taken unfair advantage of or otherwise has abused the Complainant’s mark by virtue of such registration. - The Complainant contends that the trademark registrations of the Complainant pre-date the creation date of the disputed domain name and that the trademark HALEON of the Complainant has acquired substantial renown and popular search engines like Google list the Complainant’s brand and services as the first result in respect of searches for “Haleon Global” and in this regard the panel takes note of the documentary evidence annexed as part of Annexure 14 of the Complaint. - It is asserted by the Complainant that the failure on the part of the Respondent to reply to its cease and desist notice may be inferred to constitute further evidence that it knowingly acted in bad faith and in this regard places reliance on Sanofi v. Domain Administrator, PrivacyGuardian.org/onlinestore, William Johnson, WIPO Case No. D2019-2846 in which the panel stated that the respondent’s failure to respond to pre-proceeding communication by the complainant “further reinforces the inference of bad faith registration and bad faith use”.
page 5 - The Complainant further contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s HALEON mark and has placed reliance upon WIPO Overview 3.0, section 3.1.4, wherein “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. The Complainant asserts that this presumption exists in the present matter, considering the clear similarities between the Disputed Domain Name and the HALEON mark. - The Complainant further states that the Respondent’s activation of mail exchange (MX) records for the disputed domain name is also evidence of bad faith registrations. The Complainant states that there is a risk that could be caused to unsuspected customers of the Complainant on receipt of emails from the disputed domain name and the presence of MX records suggests the Respondent could engage in harmful activity through email distribution, given the evidently implied affiliation of the disputed domain name with the Complainant’s HALEON trademark. It is averred that the presence of MX records has also been found by panelists in previous disputes to evince bad faith. - Lastly, the Complainant contends that the disputed domain name has also been offered for sale at a price of USD 4,969 – being a price far above registration costs for the disputed domain name. and that while this offer for sale is general and not made directly to the Complainant, it can be nevertheless inferred that it further constitutes evidence of the Respondent’s attempt to commercially gain from misuse of the HALEON mark. 6. Accordingly, for the aforesaid reasons the Complainant states that the disputed domain name has been registered and used in bad faith by the Respondent. B. Respondent The Respondent did not furnish its response to the Complaint herein and bearing this in mind and in this background, the Panel shall draw such adverse inferences from the absence of the Respondent’s reply as it considers appropriate in the circumstances. 6. Discussion and Findings 6.1. Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that: (i) The disputed domain name is identical or confusingly similar to the 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. 6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding. 6.3 Further, as is the case in all UDRP proceedings, while this Panel notes that the burden of proof is on the Complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.
page 6 A. Identical or Confusingly Similar - This Panel is satisfied that the Complainant has been able to establish that it has both statutory and common law rights over the word “HALEON”, by virtue of both its trademark registrations across several jurisdictions for the same and also owing to its extensive usage of the trademark and trade name “HALEON” in relation to its business. - This Panel also notes that the International application for the registration of the word “HALEON” bearing number 1674572, has been filed inter alia designating India as one of the countries to which the Complainant seeks to extend its protection of the trademark “HALEON” and that in respect of the corresponding Indian Application bearing number 5557002 (IRDI application number) an opposition has been filed by a third party. However, the panel is of the view that this opposition does not in any manner affect the rights that the Complainant has otherwise obtained and established over the trademark and trade name “HALEON” owing to its prior adoption and continuous usage prior to the date on which the disputed domain name was registered. - 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. - It is also pertinent to note that the Complainant is the owner and registrant of the domain name “www.haleon.com”. Accordingly, on a mere visual comparison of the trademark “HALEON” vis-à-vis the disputed domain name it is ex facie evident that it is confusingly similar to the Complainant’s HALEON trademarks (and also its primary website “www.haleon.com”). This panel notes that the entirety of the mark of the Complainant is reproduced within the disputed domain name. - This Panel accepts the contentions of the Complainant that the issue of ‘identical or confusingly similar’ for the purposes of deciding upon the first element of the UDRP should be adjudicated upon by utilising a side-by-side comparison to decide “whether the alphanumeric string comprising the challenged domain name is identical … or sufficiently approximates the trademark” in which the Complainant has rights. The disputed domain name plainly contains the Complainant’s HALEON trademark, in addition to the word “global” and this addition (and the gTLD extension “.com”) does absolutely nothing to preclude a finding of confusing similarity. In support of these findings the Panel relies on Advanced Magazine Publishers Inc. d/b/a Conde Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743. - The Panel is therefore satisfied that the Complainant has established that the Disputed Domain Name is identical and confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests - The Panel accepts the contentions of the Complainant that the Respondent has “neither used nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” and for this reason has inter alia failed to demonstrate a right or legitimate interest in the disputed domain name as per paragraph 4(c) of the Policy. - The Panel further agrees that since the disputed domain name has continually resolved to a parked page comprising PPC advertising links and since the PPC links capitalise on the reputation of the Complainant’s mark, as the distinctive portion of the disputed domain name is the word HALEON, which has no ordinary or dictionary meaning, it can be inferred that there is no bona fide offering of goods or services by the Respondent. See WIPO Overview 3.0, section 2.9. Further the panel also agrees with the Complainant that the use of the disputed domain name by the Respondent, is to misleadingly divert Internet traffic to unrelated sites through PPC links and clearly does not amount to either noncommercial (given the nature of PPC links) or fair use under the UDRP.
page 7 - The Panel holds the view that the Respondent through the use of the disputed domain name is seeking to attract Internet traffic through use of the distinctive HALEON name and in this regard the Complainant’s reliance upon the decision under Sara Lee Foods, LLC v. Qais Satarzadh, WIPO Case No. D2015-0918 is agreed and acknowledged by the Panel. - The Panel notes that there is no evidence to show that the Respondent is affiliated to the Complainant nor has it been authorised or licensed by the Complainant to register the disputed domain name or any entity containing the Complainant’s trademark. - On a perusal and careful analysis of 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 and hence the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. - Accordingly, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in the disputed domain name as specified in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel notes that the registration of the disputed domain name and its use of the same is evidently in bad faith for the various reasons as stated hereinbelow: - Firstly, the trademark registrations of the Complainant pre-date the creation date of the disputed domain name and that the trademark HALEON of the Complainant has acquired substantial recognition through the various publicity and marketing efforts of the Complainant. Well-known search engines list the Complainant’s brand and services as the first result in respect of searches for “Haleon Global” and “HALEON” by which it can be inferred that the Respondent ought to have been aware of the gaining popularity and recognition of the trademark “HALEON” of the Complainant, which it has tried to capitalise. - Secondly, the Panel is of the view that the registration and usage of the disputed domain name is ex facie in bad faith as stipulated under paragraph 4(b)(iv) of the Policy as all the evidence placed on record only seem to indicate that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s HALEON mark. In this regard, reliance is also placed upon WIPO Overview 3.0, section 3.1.4, wherein “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or 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”. - Thirdly, the Complainant’s contention that the presence of MX records suggests that the Respondent could engage in harmful activity through email distribution to unsuspected customers seems to be a valid concern that cannot be brushed aside especially given the pattern of conduct of the Respondent in neither responding to the cease and desist notice of the Complainant nor to the subject Complaint. The Panel agrees with the averments of the Complainant that the presence of MX records has also been found by panelists in previous disputes inter alia to evince bad faith and in this regard the facts in the instant matter leads one to conclude that the presence of MX records in the instant case can also be considered as evidence of bad faith. - Lastly, the Complainant’s contention that the disputed domain name has also been offered for sale at a price of USD 4,969 – being a price far above registration costs for the disputed domain name is also relevant and is to be seriously considered in the totality of the circumstances prevailing in the matter and it can only be inferred that this also further constitutes evidence of the Respondent’s attempt to
page 8 commercially gain from misuse of the HALEON mark. Hence, it has to be concluded that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark, which clearly establishes bad faith. - Accordingly, the Panel finds that the Complainant has established the third element of the Policy and that the Respondent has registered and used the disputed domain name in bad faith. 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. /Saisunder Nedungal Vidhya Bhaskar/ Saisunder Nedungal Vidhya Bhaskar Sole Panelist Date: February 14, 2024
Full & Egal Universal Law Academy