The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom (“UK), represented by Demys Limited, UK.
The Respondent is Domain Administrator, See PrivacyG, United States of America / Paul Judge, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2019. On May 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 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 8, 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 Clive Duncan Thorne as the sole panelist in this matter on June 6, 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, The Commissioners for HM Revenue and Customs, is a non-ministerial department of the UK Government responsible for the collection of UK taxes, the payment of some forms of state support and the administration of some other regulatory regimes. It is formally known as “Her Majesty’s Revenue and Customs” but this is often shortened to the initials “hmrc”.
The Complainant can trace its predecessors to the Board of Taxes in 1665 and the Board of Inland Revenue in 1849. The Inland Revenue and HM Customs and Excise merged in April 2005 pursuant to The Commissioners for Revenue and Customs Act 2005 to become The Commissioners for HM Revenue and Customs.
As the UK Government’s tax authority almost every UK individual and business is a direct customer of the Complainant and user of its services. Further information as to its activities can be found on its website which can be accessed through the domain name . At Annex 03 are exhibited indicative screenshots from the website.
The Complainant draws attention to the fact that it, as with other tax authorities worldwide, is frequently targeted by phishing, online scams, and other criminal activity. It points out that domain name characteristics have been used to target the Complainant and its customers. For example, the use of domain names made up of the Complainant’s marks and additional terms such as “tax”, “contact”, or “advice”, or suggesting actions such as “refund”, “rebate”, or “demand”.
To support these assertions the Complainant exhibits a number of articles which set out the common characteristics of the threats against it and its customers. Most of these relate to scam emails, fraudulent online tax returns, domain name typo-squatting, and phishing emails.
In the present case the disputed domain name matches a variety of the criteria of fraudulent use which it lists and refers to such as the use of false or redacted contact details or inactive websites.
The Complainant has brought previous Complaints in which it has been successful. These are set out in Annex 04. The Complainant particularly relies upon The Commissioners for HM Revenue and Customs v. Thomas E. May,WIPO Case No. D2018-1475, which involved a domain name that incorporated the Complainant’s HMRC marks and the initials “uk” together with the additional term “gov”.
The Complainant is the proprietor of a number of UK registered trade marks including No. 2471470 HMRC registered on March 28, 2008, and No. 3251234 HM REVENUE AND CUSTOMS registered on, December 29, 2017. The former pre-dates the disputed domain name by approximately 11 years, the latter by approximately 2 years. Copies are exhibited at Annex 07. The Respondent registered the disputed domain name on February 22, 2019.
The Complainant also submits that it owns unregistered rights in the initials HMRC as a result of it being widely known under those initials in the UK and elsewhere. To evidence this, it exhibits screenshots from relevant websites and articles referring to the Complainant and the initials by which it is commonly known.
It also relies upon the previous Panel decisions exhibited at Annex 04 to show that previous Panels have held that knowledge of the Complainant as HMRC has spread elsewhere in the world beyond the UK.
Little is known of the Respondent given the absence of a Response. Indeed the Respondent has allowed its details to be redacted from the public WhoIs website.
The disputed domain name resolves to what appears to be a default page provided by the “LifeSpeed Web Server” software. A screenshot of the disputed domain name taken on May 1, 2019, is exhibited at Annex 05.
In the absence of a Response, the Panel finds the above evidence adduced by the Complainant to be true and proceeds to determine this Complaint on the basis of that evidence. 5. Parties’ Contentions A. Complainant
The Complainant submits;
1. that it has registered and unregistered trade mark rights for inter alia the mark HMRC and that the disputed domain name is confusingly similar;
2. the Respondent has no rights or legitimate interests in the disputed domain name and in particular is not known as “hmrc” or “hmrcuk” or traded as such;
3. the Respondent’s passive holding of the disputed domain name constitutes registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds on the evidence referred to in section 4 above that the Complainant has registered rights in the UK in the mark HMRC and registered rights in the mark HM REVENUE AND CUSTOMS.
The disputed domain name consist of the letters “hmrc”, which is identical to the Complainant’s mark HMRC, save for the addition of the letters “uk”, which are an established abbreviation for the United Kingdom and clearly denote the United Kingdom.
Save for the addition of the top level domain name “.com”, which can be ignored for this purpose, the Panel finds that the disputed domain name is confusingly similar to the mark HMRC in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s submission that there is no evidence that the Respondent has been commonly known by the name “hmrcuk” prior to or after the registration of the disputed domain name. There is no evidence that the Respondent has been licensed or authorized to use the mark on similar variations.
The Complainant points out that there is no evidence to suggest that the Respondent owns any trade marks that incorporate or are similar or identical to the terms “hmrc” or “hmrcuk”. Equally, there is no evidence that the Respondent has ever traded or operated as “hmrc” or “hmrcuk”.
The Complainant notes that the disputed domain name has not been used in connection with any, noncommercial or fair use, without intent for commercial gain, in terms of paragraph 4 (c)(iii) of the Policy. The disputed domain name has since its registration remained effectively inactive as can be seen from Annex 05.
In these circumstances the Panel finds that the Respondent has no rights or legitimate interest in respect of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant submits that the passive holding of the disputed domain name by the Respondent constitutes bad faith.
The evidence adduced by the Complainant shows that it is well known in the UK and overseas and that the mark HMRC has been used for many years prior to registration of the disputed domain name.
There is moreover no evidence of a legitimate website published by the Respondent, which is itself evidence of a lack of an actual or contemplated good faith use of the disputed domain name.
The Panel accepts these contentions and also that the evidence of the Complainant’s widespread use and reputation in HMRC shows that it is “inconceivable” that the Respondent would have registered the disputed domain name without having the Complainant’s trade mark rights in HMRC in mind.
In the absence of a Response and taking this evidence into account the Panel finds that the disputed domain name was registered and used in bad faith.
In reaching this conclusion the Panel is supported by the previous panel decision cited by the Complainant in which it was party; The Commissioners for HM Revenue and Customs v WhoisGuard Protected WhoisGuard, Inc / Tim George,WIPO Case No. D2018-2349, involving similar facts and issues of bad faith to the present proceeding. 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.
Clive Duncan Thorne
Sole Panelist
Date: June 12, 2019
Full & Egal Universal Law Academy