The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Adil Khasanov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 details. On May 7, 2020, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant requested English to be the language of the proceedings. The Respondent did not reply on the language of the proceedings. 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 May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2020. The Center appointed Taras Kyslyy as the sole panelist in this matter on June 18, 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 the collection of taxes, the payment of some forms of state support and the administration of other regulatory regimes. The Complainant in its present form was created by the merger of the Inland Revenue and HM Customs and Excise in April 2005. The Complainant is formally known as the HMRC, which is acronym for “Her Majesty’s Revenue and Customs”. The Complainant owns the United Kingdom trademark registration No. 2471470 for the word mark HMRC, registered on March 28, 2008. The Complainant’s website can be accessed either via “www.gov.uk/government/organisations/hm-revenue-customs”, or at “hmrc.gov.uk”. The disputed domain name was registered on March 27, 2020. While the disputed domain name does not resolve to an active website, it has been used in the past to redirect Internet users to a simple English‑language website. While trying to reach a website at the disputed domain name Microsoft and Google browsers report that it is unsafe and is associated with malware distribution. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name only differs by the addition of the terms “refund”” and “covid-19”. By virtue of being the United Kingdom’s tax authority, refunds are an important element of the Complainant’s activities. The term “refund” is therefore closely associated with the Complainant and when combined with the Complainant’s well-known mark, it does not dispel any possibility of confusion but does the opposite and increases the potential for confusion. The term “covid-19” is highly topical in the light of the current global pandemic and the incorporation of this term alongside the word “refund” and the Complainant’s name and trademark does nothing to distinguish the disputed domain name from the trademark. Viewed as whole, the Complainant’s trademark is the first, prominent and most dominant element of the disputed domain name. The generic Top-Level Domain (“gTLD”) “.com” is required only for technical reasons and, as in common in proceedings under the UDRP, can be ignored for the purposes of comparison of the Complainant’s trademark to the disputed domain name. Equally, the hyphens in the disputed domain name can also be ignored. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has found no evidence that the Respondent has been commonly known by the names “hmrc” or “hmrc‑refund‑covid‑19” 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 trademark or name in association with the registration of the disputed domain name or, indeed, any domain name, service or product. The Complainant has found nothing to suggest that the Respondent owns any trademarks that incorporate or are similar or identical to the terms “hmrc” or “hmrc refund covid 19”. Equally, the Complainant has found no evidence that the Respondent has ever traded or operated as “hmrc” or “hmrc refund covid 19”. The disputed domain name has been used to distribute malware and no such use for frauduent activity could give the Respondent a legitimate interest in the disputed domain name. The disputed domain name is now passively held and as such has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain. It is highly unlikely that the Respondent intended to use the disputed domain name for any legitimate or fair use and, indeed, any such use is completely at odds with the use of the disputed domain name to distribute malware. 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. The disputed domain name could not be used in any manner without causing widespread confusion given that the disputed domain name is confusingly similar to the Complainant’s registered trademark and name. The disputed domain name was registered and is being used in bad faith. The disputed domain name has been used to distribute malware, and such distribution of unrelated third-party software that has been flagged as malicious by reputable third parties cannot be a bona fide use and avers that any such use must take unfair advantage of the Complainant’s rights. The Respondent’s further passive holding of the disputed domain name constitutes bad faith considering that (i) the Complainant is very well known in both in the United Kingdom and beyond and its trademark has been used for many years prior to the registration of the disputed domain name, (ii) the disputed domain name has been used to distribute malware and as such is entirely incompatible with any good faith use, (iii) the Respondent intended to wholly or partially conceal its details from the WhoIs using false postal code, and (iv) given the fame, widespread use and reputation of the Complainant, it is inconceivable that the Respondent could have registered the disputed domain name without the Complainant’s trademark in mind and with good-faith intentions. Where it is more likely than not that a domain name is used or intended for fraud then the registration must be in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the language used within the disputed domain is English and has no meaning in Russian, (ii) it is more likely than not that the disputed domain name has been used for criminal purposes in order to target the Complainant, and (iii) the website associated with the disputed domain name is written in English. The Complainant also believes that the language of the proceedings should be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar The Panel finds that the Complainant has rights in its registered trademark. According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the WIPO Overview 3.0 ) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark. According to 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 Panel finds that in the present case the Complainant’s trademark is clearly recognizable in the disputed domain name. The addition of the generic term “refund” relates to the Complainant’s activities and is unable to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark. The term “covid-19” is highly topical in the light of the current global pandemic and the incorporation of this term alongside the word “refund” and the Complainant’s trademark does not distinguish the disputed domain name from the trademark. The hyphens in the disputed domain name can also be ignored for the purposes of establishing the confusing similarity. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875). According to section 2.13.1 of the WIPO Overview 3.0, UDRP panels have consistently 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. According to section 2.13.2 of the WIPO Overview 3.0, UDRP panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, UDRP panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In the present case the Panel finds that the misleading nature of the disputed domain name and further identification of the website at the disputed domain name by prominent web browser services as potentially dangerous and likely installing unwanted software or revealing Internet users’ personal information without authorization indicates the disputed domain name was likely used for illegal activity and thus cannot confer rights or legitimate interests on the Respondent. The Respondent has no right or legitimate interests in the disputed domain name currently resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1.4 of the WIPO Overview 3.0, 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. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United Kingdom and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith. According to section 3.3 of the WIPO Overview 3.0, 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. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the previous use of the disputed domain name for illegal activity, (iii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use and (iv) the implausibility of any good faith use to which the disputed domain name may be put. According to section 3.4 of the WIPO Overview 3.0 use of a domain name to distribute malware may constitute bad faith. As discussed above, the previous use of the disputed domain name to distribute malware supports a finding of bad faith in these circumstances. Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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 disputed domain name Taras Kyslyy
Sole Panelist
Date: June 26, 2020
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