Haleonkenya.com

The timeline behind haleonkenya.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Haleon UK IP Limited v. Dancan Obadha, Haleon Limited Case No. D2024-4628 1. The Parties The Complainant is Haleon UK IP Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Dancan Obadha, Haleon Limited, Kenya. 2. The Domain Name and Registrar The disputed domain name <haleonkenya.com> is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2024. On November 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 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 November 19, 2024. 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 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2024. page 2 The Center appointed Scott R. Austin as the sole panelist in this matter on December 24, 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 following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and provides evidence sufficient to support: Complainant, formerly known as GlaxoSmithKline Consumer Healthcare (UK) IP Limited, is a British multinational consumer healthcare company established in July 2022 as a corporate spin-off from GSK plc. and has operated under its current company name since April 14, 2023, and under the trademark HALEON (the “HALEON Mark”) to produce and distribute a range of consumer healthcare products in “nine large-scale multinational power brands (including, for example, PRONAMEL, CENTRUM and ADVIL) and 23 local growth brands” in brand categories that include “‘Oral Health’, ‘Vitamins, Minerals and Supplements (VMS)’, ‘Pain Relief’, ‘Respiratory Health’ and ‘Digestive Health and Other’”. Listed on both the London Stock Exchange and the New York Stock Exchange, Complainant had a market valuation of approximately GBP 30.5 billion as of July 2022. The HALEON Mark is a coined non-dictionary term combining “hale”, old English for “in good health”, and “leon” for “strength”. Complainant’s launch under the HALEON Mark was publicly announced by its predecessor on February 22, 2022, and completion of the demerger and listing of Complainant’s shares on the London Stock Exchange occurred in July 2022. Global media thoroughly covered the announcement of the HALEON brand on its launch date, including through internationally-renowned publications such as The Guardian, Forbes, and Bloomberg. Data from search engine statistics such as Google Trends show a significant spike in queries for “haleon” at the time it was announced. Complainant is present in Kenya both physically through its production facility in Nairobi where it offers “Health Partner” services supporting local healthcare professionals to Kenyan nationals through a dedicated website, and online as searches on “www.google.co.ke” within Kenya for “HALEON” return results related to Complainant’s HALEON Mark, its services, and numerous job vacancies with Complainant in Kenya. As shown below, since November 2021 Complainant has held an International Trademark Registration (Reg. No. 1674572) for the HALEON Mark, which includes Kenya as a designated jurisdiction. Complainant owns numerous trademark registrations for the HALEON Mark in the United Kingdom and many jurisdictions throughout the world, including Kenya where Respondent is purportedly located, and the following: 1. International Reg. 1674572, HALEON, registered on November 29, 2021, for a range of healthcare related goods and services in International Classes 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, and 44. 2. United Kingdom Reg. UK00003726732, HALEON, registered on March 11, 2022, for goods and services in International Classes 3, 5, 9, 10, 21, 29, 30, 32, 35, 36, 41, 42, and 44; and 3. Mexico Reg. 2355199, HALEON, registered on February 10, 2022, for services in International Class 36. Complainant also owns domain names incorporating the HALEON Mark, including the <haleon.com> domain name used by Complainant to access its official website at “www.haleon.com” (the “Official HALEON Mark Website”) through which Complainant informs Internet users of the HALEON offerings. The site also advertises job vacancies for roles based in a wide variety of countries. Complainant’s Official HALEON Mark Website received an average of more than 180,000 visits between December 2022 and February 2023. page 3 The disputed domain name was registered on June 5, 2024, and does not resolve to a functional website. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that the requirements for each of the elements listed in paragraph 4(a) of the Policy have been satisfied. The Panel will address its findings on each of these elements in more detail below. The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”), section 4.2. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 , section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the HALEON Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. With Complainant’s rights in the HALEON Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s HALEON Mark. Prior UDRP panels have held a domain name which wholly incorporates a complainant’s registered mark in its entirety is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. WIPO Overview 3.0 , sections 1.7 and 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”); see also Carrefour SA v. yuri eros, יינות ביתן בע"מ , WIPO Case No. D2022-1277; BNP Paribas v. Ronan Laster, WIPO Case No. D2017-2167. page 4 The disputed domain name incorporates Complainant’s HALEON Mark in its entirety and adds the trailing term “kenya”. Respondent’s addition of this term to Complainant’s HALEON Mark does not prevent a finding of confusing similarity as noted above. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v. Thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0 , section 1.11. This Panel finds that the added term “kenya” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s well-known HALEON Mark, which remains fully recognizable as incorporated in its entirety into the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0 , section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Based on the record, Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has not licensed, or otherwise authorized Respondent to use the HALEON Mark in any manner, nor is Complainant in any way or manner associated with or related to Respondent. Complainant has also claimed with persuasive evidence submitted that Respondent is not commonly known by the disputed domain name because Respondent, “Dancan Obadha”, clearly bears no resemblance to the term “haleon”, the HALEON Mark, or the disputed domain name. Respondent’s choice of “Haleon Limited” as its organization name when it registered the disputed domain name, without more, does not overcome this deficiency. Prior UDRP panels have held that the registration of a company name is not sufficient for the purposes of the Policy to establish that a respondent is commonly known by such name if that name had been chosen because of its association with the Complainant. See Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Gedion Kitili, TrendPro Systems Limited, WIPO Case No. D2019-0447 . As in that case noting the fame of the Complainant’s mark, given the circumstances here the Panel considers the fame of the Complainant’s HALEON Mark in Kenya where Respondent is purportedly located, sufficient to find it more likely that the organization name was made with Complainant in mind, likely to falsely suggest an affiliation with or connection to Complainant, and thus, in any event, finds that the Respondent is not commonly known by the disputed domain name for purposes of the Policy. Complainant also shows that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because it does not resolve to a functional website and remains inactive, so it is therefore not offering any goods or services. Prior UDRP panels have held that the inactive status of a disputed domain name does not comprise a bona fide offering of goods or services under the Policy. See, e.g., Accenture Global Services Limited v. Marc Diks, WIPO Case No. D2021-1383 . The Panel finds Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, so as to confer rights or legitimate interests in it in accordance with paragraph 4(c)(i) of the Policy and that the composition of the disputed domain name being confusingly similar to Complainant’s mark fosters an implied affiliation with Complainant. WIPO Overview 3.0 , section 2.5.1. These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. page 5 C. Registered and Used in Bad Faith Finally, Complainant must prove, by a preponderance of the evidence, that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. See, e.g., Hallmark Licensing, LLC v. EWebMall, Inc., WIPO Case No. D2015-2202 . Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent. The panel may, however, consider the totality of the circumstances when analyzing bad faith under Policy, paragraph 4(a)(iii) and may make a finding of bad faith that is not limited to the enumerated factors in Policy, paragraph 4(b). See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 . First, Complainant contends, and this Panel has found in Section 6B above, that the HALEON Mark is famous especially in the Kenya where Respondent is ostensibly located, and widely known around the world. Complainant further contends that given its HALEON Mark is famous, its trademark registration in Kenya predates by over two years Respondent’s registration of the disputed domain name, and the disputed domain name incorporates the HALEON Mark in its entirety, Respondent has no credible argument that he is unaware of the HALEON Mark. See, e.g., Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287; see also Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722 . A consensus of prior UDRP panels have 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. See WIPO Overview 3.0 , section 3.1.4. Prior UDRP panels have also found that where, as here, it would be implausible to believe that Respondent selected and was using the disputed domain name for any other purpose than to trade on Complainant’s trademark rights and reputation, it establishes a fact pattern that repeatedly has been held to constitute bad faith registration. See Houghton Mifflin Co. v. Weathermen, Inc., WIPO Case No. D2001-0211 ; see also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946. The Panel finds, therefore, that Respondent had actual knowledge of the HALEON Mark and that Respondent has targeted Complainant’s HALEON Mark in registering the disputed domain name in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754. 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. While panelists will look at the totality of the circumstances in each case, factors that that are present here which have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0 , section 3.3. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. Having reviewed the record, the Panel notes as it did in 6B above, Respondent is passively holding the disputed domain name. Complainant contends that the disputed domain name has never resolved to an active page, as it has remained inactive since its registration. Prior UDRP panels have found under the doctrine of passive holding that that the word bad faith “use” in the context of paragraph 4(a)(iii) does not require a positive act on the part of respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii). WIPO Overview 3.0 , section 3.3. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also Alitalia Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260. page 6 Given Complainant’s substantial multinational presence and resources, the record reflects that Complainant’s HALEON Mark has in a relatively short period of time developed a strong reputation and is widely known, as evidenced by its use in Kenya and a number of countries around the world with substantial media recognition, in use for over two years before the registration of the disputed domain name. Moreover, the composition of the disputed domain name encompasses the HALEON Mark in its entirety with a geographic term associated with an area where the Complainant operates. The Panel finds, therefore, that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Panel finds Complainant’s arguments and evidence persuasive and has received no arguments or evidence from Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision 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 <haleonkenya.com> be transferred to the Complainant. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: January 7, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.