The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom (“UK”), represented by Demys Limited, UK.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Adam Eve, UK.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 September 17, 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 September 17, 2021.
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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.
The Center appointed Douglas Clark as the sole panelist in this matter on October 25, 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 BackgroundThe Complainant is a non-ministerial department of the UK Government, responsible for the collection of taxes. It is commonly known as HMRC.
The Complainant is the proprietor or UK trademark number 2471470 for HMRC in classes 9, 16, 35, 36, 41, and 45 with a filing date of November 5, 2007. The Complainant also relies on unregistered rights and produces publications where it is referred to as HMRC.
The disputed domain name was registered on August 5, 2021. When the Complaint was filed, the domain name did not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant as a preliminary matter contends that the use of HMRC in a domain name is a common domain name threat so that its customers are frequently targeted by phishing, online scams, and other criminality.
The Complainant contends that the disputed domain name is confusingly similar to its mark HMRC in that it only differs by the addition of the generic phrase “tax rebate claim”. By virtue of it being the UK’s governmental tax authority, the Complainant contends that the phrase “tax rebate claim” is inherently associated with the Complainant and its activities. The adornment “tax rebate claim” does not dispel any possibility of confusion but instead does the opposite and increases the potential for confusion among Internet users.
The Complainant relying on section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), seeks to make out a prima facie case that the Respondent has no rights or legitimate interests. The Respondent is not known by the name HMRC, is not used in relation to a bona fide offering of services due to it being passively held, and no response has was received to a demand letter.
The Complainant contends that the disputed domain name was registered in bad faith and is being used in bad faith. Given the role of the Complainant as a taxation authority and the addition of the term “tax rebate claim” the Complainant contends that it is inconceivable that the Respondent could have registered the disputed domain name without the Complainant’s marks in mind and with good-faith intentions. Further, the Complainant contends that passive holding can be in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
The disputed domain name consists of the Complainant’s trademark HMRC, which is also the commonly used UK acronym for the Complainant, and “taxrebate-claim.com”. The generic Top-Level Domain is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview 3.0.
The Complainant’s trademark is an acronym with no ordinary meaning other than to describe the Complainant. The addition of “tax rebate-claim” to a trademark with or without hyphens does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant has satisfied the first element of the Policy.
B. Rights and Legitimate InterestsThere is no evidence that the Respondent has any business with or is in any way affiliated with the Complainant, nor that the Respondent is authorized or licensed to use the Complainant’s trade marks or to apply for registration of the disputed domain name. Furthermore, there is no evidence that the Respondent is commonly known by the disputed domain name. There is also no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions. In fact, to the contrary, it is clear to the panel that the disputed domain name is likely to be used for fraudulent activities. Moreover, the disputed domain name contains the Complainant’s trade mark in its entirety along with “tax rebate-claims”, which is descriptive of the nature of the Complainant’s services and as such exacerbates the risk of implied affiliation caused by the construction of the disputed domain name.
Section 2.1 of the WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent.
The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Panel is satisfied the disputed domain name was registered and is being used in bad faith.
Given the disputed domain name makes reference to HMRC and tax rebates, it is inconceivable that the Respondent was not aware of the Complainant and its HMRC trademark when it registered the disputed domain name.
Although, the disputed domain name does not resolve to a webpage, it is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.0). When weighing the totality of circumstances such as the Respondent’s use of a privacy service, the Respondent’s failure to submit any response, the incorporation of the Complainant’s trademark with words descriptive of the Complainant’s services, and the lack of any plausible good-faith justification for the registration of the disputed domain name, the Panel finds that the non-use of the disputed domain name does not prevent a finding of bad faith.
For the above reasons, the Panel finds that the disputed domain name was both registered and has been used in bad faith.
The Complainant has therefore satisfied the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Douglas Clark
Sole Panelist
Date: November 15, 2021