The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is George Hill, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Center verified that the 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 March 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default March 27, 2020. The Center appointed Antony Gold as the sole panelist in this matter on April 3, 2020. 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 United Kingdom Government responsible for taxes as well as the payment of some forms of state support and the administration of other regulatory regimes. The Complainant was constituted in April 2005 as a result of the merger of two other state bodies, namely the Inland Revenue and HM Customs and Excise. The Complainant’s full name is often shortened by the media and general public to HMRC and, on March 28, 2008, the Complainant registered HMRC as a United Kingdom trade mark, registration number 0002471470, in classes 9, 16, 35, 36 and 41. The disputed domain name was registered on January 27, 2020. It does not resolve to an active website. However, in circumstances described below, the disputed domain name has been used for fraudulent purposes. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights. In addition to its registered trade mark for HMRC, the Complainant’s full name is frequently shortened to “HMRC”, as is evidenced by the fact that Google search results for “HMRC” show results which relate to the Complainant and its activities, as well as by articles in newspapers and other media. The Complainant therefore enjoys unregistered rights in HMRC. The disputed domain name differs from the Complainant’s trade mark only by the addition of a hyphen and the word “gov”. “gov” is often used as an abbreviation for “government” and, in domain names, “.gov” is used to show that an Internet address belongs to a government department. Accordingly, “gov” is closely related with the Complainant and its activities. Whilst the Top Level Domain (“TLD”) is required only for technical reasons and is generally ignored for the purpose of comparison, the TLD component of the disputed domain name is “.tax”. As this is entirely related to the Complainant’s activities, it does nothing to dispel any further possibility of confusion. When viewed as a whole, the Complainant’s mark is the most dominant element of the disputed domain name and the additional adornments do not distinguish the disputed domain name from the Complainant’s mark. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has found no evidence that the Respondent has been commonly known by the name “GOV-HMRC”, prior to or after the registration of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any permission, consent or acquiescence from the Complainant to use its marks or name in association with the registration of the disputed domain name. The Complainant has found nothing to suggest that the Respondent owns any trade marks that incorporate, or are similar or identical to, the terms “HMRC” or “GOV-HMRC”, nor is there any evidence that the Respondent has ever traded or operated as “HMRC” or “GOV-HMRC”. The disputed domain name has not been used in connection with any legitimate non-commercial or fair use, without intent for commercial gain. Indeed, the disputed domain name has been used in a “smishing” attack, “smishing” being the fraudulent practice of sending text messages purporting to be from reputable companies in order to induce individuals to reveal personal information, such as passwords or credit card numbers. Specifically, the Respondent has sent a text message inviting the recipient to verify their details at the disputed domain name in order to receive a tax refund. Use of a domain name for illegal activity cannot confer rights or legitimate interests on a respondent. The Complainant cannot conceive of any use to which the disputed domain name could be put, now or in the future, that would not infringe the Complainant’s rights. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. It is well established under the Policy that any illegitimate activity associated with a domain name that is identical or confusingly similar to a famous or widely-known trademark is considered evidence of bad faith. Furthermore, the Respondent’s passive holding of the disputed domain name constitutes bad faith; see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the 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. A. Identical or Confusingly Similar The Complainant has provided details of the registered trade mark it owns for HMRC. This, as well as the evidence of widespread use of HMRC as a shortened version of the Complainant’s full name, establish the Complainant’s rights in HMRC. As a standard registration requirement, the TLD (that is “.tax” in this case) is disregarded when assessing confusing similarity; see section 1.1 of the WIPO Overview 3.0. The remaining differences between the disputed domain name and the Complainant’s mark, consist of a hyphen and the word “gov”. These do not prevent the disputed domain name from being confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “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.” The Complainant’s HMRC trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly:(i) if the respondent has been using the domain name in connection with a genuine offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name. There is no evidence that the Respondent has been using the disputed domain name in connection with a genuine offer of goods and services, nor that the Respondent has been commonly known by the disputed domain name. Moreover, such use as the Respondent has made of the disputed domain name does not comprise a legitimate non-commercial or fair use of it. More generally, section 2.13.1 of the WIPO Overview 3.0 explains that; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. The Complainant has produced clear evidence that the Respondent has used, or attempted to use, the disputed domain name for fraudulent purposes by asking at least one person to verify their details, at a website to which the disputed domain name purportedly resolved, in order to receive a tax refund. As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. The Complainant has made out (at least) a prima facie case, and in the absence of any response from the Respondent to the Complaint, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith A number of the indicia which point to bad faith registration, as set out at section 3.2.1. of the WIPO Overview 3.0 are present in respect of the disputed domain name. The disputed domain name comprises the commonly shortened version of the Complainant’s full name and couples it with the word “gov”, which will lead Internet users to associate the disputed domain name with a government department. In addition, the choice of TLD, that is “.tax”, will further accentuate the perception that the disputed domain name is connected with the Complainant and its function. Furthermore, there is a clear absence of rights or legitimate interests by the Respondent in the disputed domain name and no credible explanation as to why the Respondent might lawfully have chosen the disputed domain name. With respect to the use in bad faith, the known use by the Respondent of the disputed domain name is restricted to a reference in a text message sent to a member of the public to a website to which the disputed domain name purportedly resolved. To the extent that the Respondent is to be considered to have made use of the disputed domain name by the reference to it in a text message, such use has been in bad faith. As explained at section 3.1.4 of the WIPO Overview 3.0; “…given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. Furthermore, the Complainant’s submissions in relation to bad faith have been predicated on passive holding by the Respondent. Accordingly, the Panel agrees that the disputed domain name has also been passively held by the Respondent. In that respect, section 3.3 of the WIPO Overview 3.0 explains that; “From the inception of the UDRP, panelists 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. While panelists will look at the totality of the circumstances in each case, factors that 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 the 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.” Dealing with each of these factors, the Complainant’s HMRC mark is distinctive and has been widely used. Second, the Respondent has not responded to the Complaint, nor provided evidence of actual or good faith use through any other communication. Third, as the Respondent did not reply to the Complainant’s communication, it is unclear whether the contact details listed on the WhoIs record are true or false. However, given that the Respondent has been using the disputed domain name for dishonest purposes, it is unlikely that the contact details are correct. Finally, having regard to the fact that the disputed domain name is so clearly referable to the Complainant, it is not possible to conceive of any good faith use to which it could be put. The Respondent’s passive holding of the disputed domain name therefore has the characteristics which are associated with bad faith registration and use. Whilst the Respondent’s passive holding of the disputed domain name does not fit precisely within any of the specific circumstances of bad faith and use set out at paragraph 4(b) of the Policy, those circumstances are not exhaustive. As the panel said in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003: “Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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 Antony Gold
Sole Panelist
Date: April 17, 2020
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