1.1 The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom (the “Complainant”).
1.2 The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Sam Bentley, United Kingdom (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the Disputed Domain Name. On June 24, 2021, 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 June 29, 2021, 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 June 29, 2021. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021. 3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 11, 2021. 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 4.1 The Complainant in this Complaint 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 is also formally known as Her Majesty’s Revenue and Customs, which is often shortened to: “HM Revenue and Customs” or the acronym “HMRC”. The Complainant is widely known in the United Kingdom and around the world by the acronym “HMRC”. The Complainant in its present form and with its current name was created by the merger of the Inland Revenue and HM Customs and Excise in April 2005 and was established by the Commissioners for Revenue and Customs Act 2005. Thus the Complainant has functioned under the name “Her Majesty’s Revenue and Customs” since 2005. 4.2 The Complainant is the registered proprietor of several United Kingdom trade marks as listed in Annex 9 attached to this Complaint some of which are listed below as follows: 1) United Kingdom trade mark No. 2471470, HMRC, registered on March 28, 2008 for goods and services in classes 9, 16, 35, 36, 41, and 45. 2) United Kingdom trade mark No. 3251234, HM REVENUE & CUSTOMS (figurative), registered on December 29, 2017 for goods and services in classes 9, 16, 35, 36, 41, and 45. The Complainant also operates a website within the United Kingdom Government’s official portal at “www.gov.ukgovernment/organisations/hm-revenue-customs”. The Complainant’s website listed above, can be accessed through the domain name 5.1 The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s registered HMRC trade mark, in which it also has unregistered trade mark rights. As it is put, the Disputed Domain Name only differs from the Complainant’s trade mark by the inclusion of the phrase “tax rebate form” and the acronym “uk”. The Complainant asserts that viewed as a whole, and regardless of the additions, the Complainant’s HMRC mark is the most dominant element of the Disputed Domain Name. Furthermore, it is argued that since the phrase “tax rebate form” and the acronym “uk” are inherently associated with the activities of the Complainant, those additions do not prevent a finding of confusing similarity; instead, the potential for confusion amongst Internet visitors is increased. Secondly, it is contended further, that the addition of the generic Top-Level Domain (“gTLD”) “.com” and the hyphen “-” to the Disputed Domain Name does not prevent a finding of confusing similarity with the Complainant’s HMRC trade mark. 5.3 With regard to the question of bad faith registration and use, the Complainant submits as follows: First of all, since the Disputed Domain Name merely resolves to the registration service provider’s default parking page and is so passively held, such passive holding of the Disputed Domain Name constitutes bad faith use. Secondly, it is submitted that the Respondent’s use of a privacy service is indicative of bad faith use considering that the Disputed Domain Name has also been used for potentially criminal activity, the Complainant cannot see how the use of a privacy service can be legitimate. Thirdly, the Complainant refers to the Respondent’s failure to respond to the Complainant’s cease and desist letter dated June 15, 2021, and asserts that the failure to respond to the Complainant’s contentions is indicative of an admission of the Complainant’s contentions. Fourthly, as the Disputed Domain Name has been flagged as being used for phishing or other criminal activity by at least two reputable third parties, it is the Complainant’s contention that such use is a further indication of bad faith registration and use. B. Respondent 5.4 The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall draw such adverse inferences from the absence of the Respondent’s reply as it considers appropriate. 6. Discussion and Findings 6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that: (i) the Dispute Domain Name is identical and confusingly similar to the trade mark or service mark of the Complainant; (ii) the Complainant 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. 6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding. A. Identical or Confusingly Similar 6.3 The Panel finds that on a visual examination of the Disputed Domain Name it is clearly evident that it is confusingly similar to the Complainant’s HMRC registered trade mark. Undoubtedly, the Disputed Domain Name wholly incorporates the Complainant’s trade mark, which as the Complainant asserts is the most distinctive element of the Disputed Domain Name. As submitted by the Complainant the mere addition of the phrase “tax rebate form”, the acronym “uk”, the gTLD “.com”, and the hypen “-”, does not prevent a finding of confusing similarity. In support of these findings, the Panel relies on the decision of Oki Data Americas, Inc. v. ASD Inc.,WIPO Case No. D2001-0903 where the panel held as follows: “When a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the additions of other words.” Furthermore, the Panel relies on the decision in The Commissioners for HM Revenue & Customs v. Withheld for Privacy Purpose, Privacy Service provided by Withheld for Privacy ehf / Void Prices,WIPO Case No. D2021-1246 where the panel held: “The addition of abbreviations such as “gov” and words like “tax” and “rebate” to the trademark with or without hyphens does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark”. Finally, the Panel relies on the detailed discussion on the test for confusing similarity as stipulated in sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Third Edition (“WIPO Overview 3.0.”). In particular, section 1.8 where it is stated as follows: “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.” 6.4 The Panel is therefore satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark. B. Rights or Legitimate Interests 6.5 The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Respondent has failed to adduce any evidence that it has rights or legitimate interests in the Disputed Domain Name within paragraph 4(c) of the Policy. The Respondent has equally failed to provide any evidence indicating an engagement in any actual bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name within paragraph 4(c) of the Policy. In addition, there is no evidence from the Respondent to demonstrate that the Respondent is in some way or the other affiliated to the Complainant, nor has the Respondent been authorised or licensed by the Complainant to register the Disputed Domain Name or indeed any domain name, service, or product. The totality of the evidence adduced by the Complainant demonstrates that as the time the complaint was filed, the Disputed Domain Name’s website resolved to the registration service provider’s parking page featuring several advertisements and in addition the Disputed Domain Name had been flagged by at least two reputable third party as having been used for phishing or other criminal activity. The Panel finds that such conduct by the Respondent cannot be described as legitimate noncommercial or fair use activity within the Policy. See in this regard TELUS Corporation v. Domain Admin, Privacy Protect, LLC / Mayur Mangesh Rege, Mayur Consultants,WIPO Case No. D2018-0388, where the panel held as follows: “As submitted by the Complainant the Panel considers it likely that the Respondent is involved in phishing or some other financial scam. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services (see WIPO Overview 3.0, section 2.13, and, e.g., Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679).” 6.6 Accordingly, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interest in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith 6.7 On the question of bad faith registration and use, the Panel has taken into account a number of factors to conclude that the Respondent registered the Disputed Domain Name in bad faith and continued with bad faith use. In the first instance, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s distinctive trade mark HMRC, and by extension its functions and tax related activities in the United Kingdom, before electing to register the Disputed Domain Name on February 14, 2021. Secondly, the Disputed Domain Name has been flagged as being used for phishing or other criminal activity by at least two reputable third parties. Thus the Panel finds such conduct to be further demonstrative of bad faith registration and use following the recent decision in The Commissioners for HM Revenue and Customs v. Name Redacted and Name Redacted,WIPO Case No. D2020-1389. Thirdly, the Panel finds that the Respondent deliberately registered the Disputed Domain Name to disrupt the Complainant’s activities by diverting Internet visitors seeking the Complainant’s website to its own website. Fourthly, the Panel finds that the fact of the Respondent’s use of a privacy protection service considered together with all the bad faith indicia alluded to above further confirms that the Respondent registered the Disputed Domain Name in bad faith with the intention to engage in bad faith use. Fifthly, the Panel places further reliance on the Respondent’s failure to reply to the Complainant’s cease and desist letter dated June 15, 2021, as further evidence of bad faith registration and use following previous UDRP decisions such as Sanofi-aventis v. Above.com Domain Privacy/ Transure Enterprise Ltd, Host Master,WIPO Case No. D2009-1634 and in particular, The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218. Sixthly, by using the Disputed Domain Name to resolve to a website with competing pay-per-click links the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Finally, as alluded to in paragraph 5.5 above the Panel has drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant in this Complaint. 6.8 In the circumstances, the Panel is satisfied that the Respondent has registered and used the Disputed Domain Name in bad faith. 7. Decision 7.1 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 Ike Ehiribe
4.3 The Disputed Domain Name
5.2 The Complainant also contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name considering that: (1) the Complainant has never licensed or otherwise authorised the Respondent to use its trade marks or to register any domain name including the Complainant’s trade marks; (2) the Complainant has found no evidence that the Respondent has commonly been known as “hmrc” or “tax rebate form hmrc uk” prior to, or after, the registration of the Disputed Domain Name; (3) 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 “tax rebate form hmrc uk” nor any evidence that the Respondent has ever traded or operated as “hmrc” or “tax rebate form hmrc uk”; (iv) 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; and (v) the Disputed Domain Name has been flagged by at least two reputable third parties as having been used for phishing or other criminal activity, which could never give the Respondent a legitimate interest in the Disputed Domain Name.
Sole Panelist
Date: August 24, 2021
Full & Egal Universal Law Academy