Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019. On August 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 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 September 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 6, 2019.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2019.
The Center appointed Phillip V. Marano as the sole panelist in this matter on October 9, 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
Complainant is the tax and customs authority of the United Kingdom Government. Complainant, as it exists in its present form, has been formally known as “Her Majesty’s Revenue and Customs” since April 2005. As demonstrated by search engine evidence and unsolicited third-party publications adduced by Complainant, Complainant’s name is often shortened to “HM Revenue and Customs” or the acronym “HMRC”. Complainant owns a valid and subsisting registration for the HMRC trademark in the United Kingdom, with priority dating back to the date its application was filed on November 5, 2007.
Respondent registered the disputed domain name on June 14, 2019. At the time of filing of the Complaint, the disputed domain name redirected to a variety of different pay-per-click advertising pages, which contain links for “Tax Relief” and “Get Your Overpaid Tax Refunded” and relate to the services provided by Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts ownership of the above registered trademark rights in the HMRC trademark in the United Kingdom as well as unregistered trademark rights internationally based on Internet search engine results, third-party publications, and prior UDRP panel determinations. The disputed domain name is confusingly similar to Complainant’s HMRC trademark, according to Complainant, because it only differs by the addition of the dictionary word “claim”, which is closely associated with Complainant.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is known by HRMC; Respondent’s use of the disputed domain name to serve pay-per-click advertising links; and Respondent’s attempts to sell the disputed domain name for USD $899 on the S domain name marketplace.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: The fame, widespread use and reputation of the Complainant, making it inconceivable that Respondent registered the disputed domain name with bona fide intentions; Respondent’s prior loss of at least thirty-seven previous formal disputes under the UDRP; Respondent’s use of the disputed domain name to serve a variety of pay-per-click advertising pages, which all contain third party, commercial links related to Complainant’s activities; and Respondent’s attempts to sell the disputed domain name for USD $899 on the S domain name marketplace. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.3 (“A respondent’s default 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. 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.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, Section 1.2.1. Complainant submitted evidence that the HMRC trademark has been registered in the United Kingdom with priority dating back to the date it was filed on November 5, 2007, nearly twelve years before the disputed domain name was registered by Respondent. Thus, Complainant’s rights in the HMRC trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s HMRC trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s HMRC trademark because, disregarding the “.com” Top-Level Domain, that trademark is contained in its entirety within the disputed domain name. The confusing similarity is not dispelled by combination with the descriptive term “claims”. WIPO Overview 3.0, Section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). Top-Level Domains, such as “.com” in the disputed domain name, are generally viewed a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, Section 1.11.
In view of Complainant’s registration for the HMRC trademark, and incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, Section 2.1.
It is evident that Respondent, identified by registration data for the disputed domain name as Carolina Rodrigues, is not commonly known by the disputed domain name, or Complainant’s HMRC trademark. It is equally evident, based on The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC DomainsByP / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2348, that Respondent was, and is, aware of Complainant and its HMRC trademark. Service of pay-per-click advertisements through the disputed domain name and offers to sell the disputed domain name on the S, attempt to trade off the goodwill of Complainant and accordingly cannot constitute any bona fide offering of goods or services using the disputed domain name.
In view of Respondent’s prior bad faith targeting of Complainant’s HMRC trademark, and Respondent’s attempts to trade off the goodwill of the HMRC trademark, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances and activities as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark to a competitor of Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
ii. Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
This Complaint presents a quintessential example where Respondent has engaged in a pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy. WIPO Overview 3.0, Section 3.1.2. (“This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.”)
Complainant has cited over thirty cases where Respondent was found to have registered and used domain names in bad faith, all of which resulted in decisions against Respondent. These cases demonstrate that Respondent has repeatedly targeted in bad faith well-known trademarks that include PATAGONIA, CRATE AND BARREL, MARLBORO, RED BOX, DISCOVER, CALVIN KLEIN, LEGO, TOMMY BAHAMA, IBM, and many other brands. See e.g. The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByP / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1117; ZB, N.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1959; Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1616; The British United Provident Association Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1755; The Terminix International Company Limited Partnership v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPOCase No. D2018-2112; International Business Machines Corporation v. Domains By Proxy, LCC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2657.
These numerous adverse UDRP decisions against Respondent show that Respondents’ modus operandi is to: hide her true identity through anonymous domain name registration services; register domain names incorporating well-known trademarks of others; trade-off the goodwill of those marks for commercial gain by redirecting Internet traffic to pay-per-click advertisements or to third-party websites; and refuse to participate when the rightful trademark owners file Complaints pursuant to the UDRP. Additionally, Respondent has previously targeted in bad faith Complainant and specifically targeted Complainant’s HMRC trademark. The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC DomainsByP / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2348.
In view of the undeniable fact that Respondent is a serial cybersquatter, specifically having previously targeted Complainant’s HMRC trademark, the Panel concludes that Complainant has established the third element 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 disputed domain name, , be transferred to Complainant.
Phillip V. Marano
Sole Panelist
Date: October 23, 2019
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