The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Jailson de sousa, Mr, 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 July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2020, 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 July 27, 2020, 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 July 27, 2020. 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 August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020. The Center appointed George R. F. Souter as the sole panelist in this matter on September 7, 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, and for certain purposes by the department itself, to HMRC and, on March 28, 2008, the Complainant registered HMRC, in block capitals, as a United Kingdom trade mark, registration number 0002471470, in classes 9, 16, 35, 36, 41 and 45. The disputed domain name was registered on July 1, 2020, and resolves to a website that closely mimics the look and feel of the Complainant’s website. People accessing the website are presented with an option to calculate a purported tax refund by entering their postal code. They are then taken through a series of pages asking them to enter various personal and payment details including their full name, date of birth, address, email address, telephone number, mother’s maiden name, a credit or debit card number, expiry date and security code for said card, bank account number and sort code. After they have filled out those fields they are then redirected to the Complainant’s website at “https://www.gov.uk”. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain is confusingly similar to its HMRC trademark, containing its HMRC trademark in its entirety, together with the mere addition of the descriptive or non-distinctive element “taxrefunduk” (sic). The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, particularly that the Respondent, to the best of the Complainant’s knowledge, has never been known by the disputed domain name, and that the Complainant has never granted permission to the Respondent to use its HMRC trademark in connection with a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the website described above. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark 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’s United Kingdom trademark registration number 0002471470 is by itself, sufficient to satisfy the requirement of paragraph 4(a)(i) of the Policy in respect of the Complainant’s ownership of trademark rights to its HMRC trademark. Panels in prior cases under the UDRP involving the Complainant’s HMRC trademark, including The Commissioners for HM Revenue and Customs v. Dani Gan, WIPO Case No. D2017-0357; The Commissioners for HM Revenue and Customs v. Wei Wang, APIS, WIPO Case No. D2017-1492; and The Commissioners for HM Revenue and Customs v. Domain Administrator, See PrivacyGuardian.org / Paul Judge,WIPO Case No. D2019-1032, have recognized that the Complainant has acquired considerable common law rights to its HMRC trademark through usage. The Panel agrees with the views of the UDPR panels in these prior cases, and finds that the Complainant’s HMRC trademark is likely to be familiar to the majority of the adult population of the United Kingdom, generating considerable common law trademark rights in the Complainant’s HMRC, to the benefit of the Complainant. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non-distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers that the mere addition of the words “tax refund UK” to the Complainant’s HMRC trademark are clearly descriptive, and do not prevent a finding of confusing similarity between the Complainants trademark and the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the disputed domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant’s well-known HMRC trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. The usage of the website operated under the disputed domain name, as described above, convinces the Panel that the website can be regarded as a “phishing” website. It is well-established in prior UDRP decisions under the Policy that the use of a phishing website constitutes use of the disputed domain name in bad faith, and the Panel so finds in the circumstances of the present case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 George R. F. Souter
Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” gTLD to be irrelevant in the circumstances of the present case, see section 1.11 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Sole Panelist
Date: September 21, 2020
Full & Egal Universal Law Academy