ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Haleon UK IP Limited v. Melanie Atindehou Case No. D2024-2045 1. The Parties The Complainant is Haleon UK IP Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Melanie Atindehou, Benin. 2. The Domain Name and Registrar The disputed domain name is registered with Ligne Web Services SARL (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2024. On May 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2024, 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 (Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2024, 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 May 20, 2024. On May 17, 2024, the Center informed the parties in French and English, that the language of the registration agreement for the disputed domain name is French. On May 20, 2024, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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 in French ang English of the Complaint, and the proceedings commenced on May 23, 2024. In accordance with the
page 2 Rules, paragraph 5, the due date for Response was June 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2024. The Center appointed Vincent Denoyelle as the sole panelist in this matter on June 19, 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. 4. Factual Background The Complainant, formerly GlaxoSmithKline Consumer Healthcare (UK) IP Limited, is a British multinational consumer healthcare company established in July 2022 as a corporate spin-off from GlaxoSmithKline plc. GlaxoSmithKline Consumer Healthcare (UK) IP Limited changed its name to Haleon UK IP Limited on April 14, 2023. The Complainant owns several registered HALEON trade marks including the following: - International trade mark HALEON n° 1674572, registered on November 29, 2021; - Mexican trade mark HALEON n° 2355199, registered on February 10, 2022; and - United Kingdom trade mark HALEON n° UK00003726732, registered on March 11, 2022. The Complainant also owns and operates its main website at “www.haleon.com”, which is used to inform Internet users of the HALEON offerings and for advertising job vacancies in many countries. The disputed domain name was registered on January 18, 2024, and does not point to any active website. The Complainant sent a cease-and-desist letter to the Respondent on March 13, 2024, in relation to the disputed domain name. Mail exchange (“MX”) records are activated for the disputed domain name. 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 its HALEON trade mark is reproduced identically in the disputed domain name and that the addition of the term “online” is not sufficient to alleviate the likelihood of confusion between the Complainant’s HALEON trade mark and the disputed domain name. The Complainant points to the passive use of the disputed domain name to conclude that the Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services and that such use does not qualify as a legitimate noncommercial or fair use of the disputed domain name. The Complainant contends that by registering the disputed domain name, the Respondent clearly targeted the Complainant and its HALEON trade mark. The Complainant also argues that given the overall circumstances of the case, including the reputation of the Complainant and the distinctiveness of its HALEON trade mark, the passive use of the disputed domain name constitutes bad faith registration of the disputed domain name. The Complainant also points to the fact that MX records are activated for the disputed domain name and that the Complainant sent a cease-and-desist letter to the Respondent prior to filing the Complaint, to which the Respondent did not reply.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of the Proceeding The language of the Registration Agreement for the disputed domain name is French. 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 disputed domain name includes the English term “online”; - the Respondent’s email address has been used to register other domain names comprising English-language terms; and - the Complainant’s representatives are based in the United Kingdom and requiring a translation would result in the incurrence of additional expenses and unnecessary delay. The Respondent did not make any specific submissions with respect to the language of the proceeding. 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. 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 3.0, section 1.7. The Complainant has shown rights in respect of a trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trade mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “online”, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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 finds the first element of the Policy has been established.
page 4 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 evidence, the complainant is deemed to have satisfied 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. Here there is no indication that the Respondent is commonly known by the disputed domain name. In addition, in the present circumstances, the passive holding of the disputed domain name cannot qualify as either use of the disputed domain name (or demonstrable preparations for such use) with a bona fide offering or a legitimate noncommercial or fair use. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. 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 finds that the Respondent, at the time of registration of the disputed domain name, must have been aware of the Complainant’s trade mark HALEON reproduced in the disputed domain name given (i) the reputation and distinctiveness of the HALEON trade mark and (ii) the fact that all first page results obtained when searching for “haleon” on Google refer to the Complainant. As for use of the disputed domain name in bad faith, the disputed domain name does not point to an active website. In the face of the Complaint, the Respondent has not attempted to justify its registration or use of the disputed domain name. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding including (i) the significant online visibility of the Complainant’s HALEON trade mark, (ii) the failure of the Respondent to respond to the Complainant’s cease-and-desist letter and to submit a response to the Complaint or to provide any evidence of actual or contemplated good-faith use and (iii) the nature of the disputed domain name making it clear that the Complainant’s trade mark is being targeted. WIPO Overview 3.0, section 3.3.
page 5 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. /Vincent Denoyelle/ Vincent Denoyelle Sole Panelist Date: July 3, 2024
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