The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom (“UK”), represented by Demys Limited, UK.
The Respondent is Contact Privacy Inc. Customer 0153820061, Canada / Beth Reil, Reil, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2019. On May 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2019 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 3, 2019.
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 May 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 7, 2019. 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 non-ministerial department of the UK that is responsible for, amongst other things, the collection of taxes. It was created in its present form by Act of Parliament in 2005 but its predecessor entities were founded as early as 1665.
The Complainant is the owner of a trade mark registration for a mark consisting of the abbreviation “hmrc” (the “HMRC Mark”) in the UK registered on March 28, 2008 for goods and services in classes 9, 16, 35, 36 38, 41 and 45 (registration number UK00002471470).
The Domain Name was registered on January 30, 2019. The Domain Name resolves to a website (“the Respondent’s Website”) that is under construction. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s HMRC Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the HMRC Mark, having registered the HMRC Mark in the UK. The Domain Name is confusingly similar to the HMRC Mark since it reproduces the HMRC Mark along with the descriptive abbreviation “gov” and the “.tax” generic Top-Level Domain (“gTLD”) that do not distinguish the Domain Name from the HMRC Mark. In particular the “gov” element is likely to signal that the Domain Name is connected to a website related to governmental business and the “.tax” gTLD is clearly connected to the Complainant’s activities.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial fair use of the Domain Name or making a bona fide offering of goods and services from the Domain Name, indeed the Respondent makes no use of the Domain Name at all.
The Domain Name was registered and is being used in bad faith. Given the nature of the Domain Name and its lack of present use it is highly likely that the Domain Name is being used or intended to be used for phishing or other illicit use, indeed given that any email sent from the Domain Name would be assumed to be from the Complainant, there is no plausible circumstance under which the Respondent could use the Domain Name other than in bad faith. The Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the HMRC Mark, having a registration for the HMRC Mark as a trade mark in the UK.
The Domain Name incorporates the HMRC Mark with the addition of the descriptive term “gov” and the “.tax” gTLD. The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s HMRC Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the HMRC Mark or a mark similar to the HMRC Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the HMRC Mark at the time the Respondent registered the Domain Name. The HMRC Mark is a coined abbreviation with no meaning in the English language. Furthermore, there is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name not only incorporating the HMRC Mark, but adding the terms “gov” and “.tax”, both of which specifically refer to the Complainant and the services it offers unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and its HMRC Mark.
The Domain Name is currently inactive. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 established that a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith in circumstances where a domain name is unused.
In the present case the Complainant has put on considerable evidence that its customers are regularly the target of phishing, online scams and other criminality. The nature of the Domain Name is such that a citizen of the UK, upon receiving an email sent from the “@” domain, would almost certainly (at least at first instance) think that such an email was sent from the Complainant. It is almost impossible to identify any plausible legitimate use of the Domain Name since any use of the Domain Name would almost inevitably result in confusion with the Complainant. As such the Panel is prepared to infer, based on the nature of the Domain Name, the passive holding of the Domain Name, the absence of any plausible legitimate use of the Domain Name and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct, that the Domain Name is most likely being held pending use in a manner that will take advantage of the similarity between the Domain Name and the name of the Complainant and HMRC Mark. As such the Panel finds that the passive holding of Domain Name amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: June 10, 2019
Full & Egal Universal Law Academy