Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Paxo Lini, ChoppaChoppa, United Kingdom.
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 Complainant on September 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 20, 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 Respondent of the Complaint, and the proceedings commenced on September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2021.
The Center appointed David Perkins as the sole panelist in this matter on October 19, 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.A. Complainant4.A.1 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. In its present form and with its current name, Complainant was created by the merger of the Inland Revenue and HM Customs and Excise in April 2005 and was established in The Commissioners for Revenue and Customs Act 2005.
4.A.2 Although formally known as “Her Majesty’s Revenue and Customs”, Complainant is often referred to as “HM Revenue and Customs“ or simply “HMRC”. Annexed to the Amended Complaint are particulars of the following United Kingdom registered trade marks of which Complainant is the proprietor.
Registration No.
Mark
Classes of goods and services
Dates of registration
2,471,470
HMRC
9, 16, 35, 36, 41 and 45
March 28, 2008
3,251,234
HM Revenue & Customs
9, 16, 35, 36, 41 and 45
December 29,2017
4.A.3. Complainant also asserts unregistered rights in the mark “HMRC” both in the United Kingdom and around the world. Exhibited as evidence are search results from Google for “HMRC”, its Facebook, Twitter and LinkedIn pages and articles using the mark covering the period 2005 to 2019 from various media, including well-known publications in the United Kingdom and the United States. Additionally, as the United Kingdom Government’s tax authority, Complainant says that almost every United Kingdom individual and business is a direct customer and user of its services.
4.A.5. Complainant is also the registrant of the domain name “www.hmrc.gov.uk” and a screenshot of the website to which that domain name resolves is annexed to the Amended Complaint.
4.A.6 Also annexed to the Amended Complaint is a schedule of some 76 domain name cases under the UDRP over the period 2017 to date in which Complainant has successfully asserted its rights in the “HMRC” and “HM Revenue and Customs” marks. Of those 76 cases, all but three involved disputed domain names using the “HMRC” mark.
4.B. Respondent4.B.1 In the absence of a Response, what is known of Respondent is contained in the Amended Complaint and its Annexes.
4.B.2 The disputed domain name was registered on March 15, 2021.
4.B.3. The Amended Complaint states that, at the time of submitting the Complaint, the disputed domain name did not resolve to an active website. Complainant then notes that the disputed domain name’s zone file is configured with Mail eXchanger records, which means that it can be used for email communication. Additionally, Complainant further notes that the disputed domain name is also configured with a Sender Policy Framework record which, it says, decreases the likelihood of emails sent from the specified server on behalf of the disputed domain name from being marked as spam by the recipient.
4.B.4 Finally, annexed to the Amended Complaint is a ‘Cease and Desist’ letter addressed to Respondent from Complaint’s representatives dated August 17, 2021 to which no reply was received.
5. Parties’ Contentions 5.A. ComplainantIdentical or Confusingly Similar
5.A.1. Complainant’s case is that the disputed domain name incorporates its HMRC trade mark in its entirety. That mark is, Complainant says, the most prominent, dominant and distinctive element of the disputed domain name. Addition of the generic phrase ‘tax refund’ is, Complainant says, only likely to increase the potential confusion among Internet users given that that phrase is inherently associated with Complainant and its activities.
5.A.2 Complainant cites the analogous case of The Commissioners for HM Revenue and Customs v. Tyrone Jackson,WIPO Case No. D2018-0298, which concerned the disputed domain name
Rights or Legitimate Interests
5.A.3 Complainant says it has found no evidence that Respondent has been commonly known by the names HMRC or TAX REFUND HMRC. Nor has Complainant licensed or otherwise authorised use of its marks.
5.A.4 Nor, Complainant says, has it found any evidence that Respondent has ever traded or operated as HMRC or TAX REFUND HMRC. Rather, the disputed domain name is a passive holding. As noted in paragraph 4.B.3 above, it does not resolve to an active website. Citing the decision in Microsoft Corporation v. Charolais ChrisochoouWIPO Case No. D2004-0186, Complainant submits that the passive holding of a domain name is not sufficient to establish legitimate interest or bona fide use of such domain name.
5.A.5 Finally, citing the decision in The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218, Complainant submits that Respondent’s failure to respond to the Cease and Desist letter (referred to in paragraph 4.B.4 above) amounts to adoptive admission by Respondent of Complainant’s contentions.
Registered and Used in Bad Faith
5.A.6 Complainant’s case is that the circumstances of this case evidence registration and use of the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Citing section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Complainant asserts that the 4 factors there identified are met in this case by the passive holding of the disputed domain name referred to in paragraphs 4.B.4 and 5.A.4 above. First, Complainant’s “HMRC“ mark is highly distinctive and well-known both in the United Kingdom and beyond. Second, Respondent has failed to respond (paragraph 4.B.4 above) and put forward any evidence of contemplated or actual good faith use of the disputed domain name. Third, Respondent has redacted, or allowed the redaction, of its details from the public WhoIs database. Fourth, given the well-known status of Complainant’s marks (see, paragraphs 4.A.2 to 4.A.6), Complainant says “…that it is inconceivable that the Respondent could have registered the disputed domain name without the Complainant’s marks in mind and with good intentions.”
5.A.7 With reference to paragraph 4.B.3 above, Complainant further asserts that, given the confusing similarity of the disputed domain name to its marks, anyone receiving an email originating from that domain name would reasonably assume that it was sent from Complainant.
5.A.8 Finally, with reference to section 3.6 of the WIPO Overview 3.0, Complainant says that, in the circumstances of this case, Respondent’s use of a privacy service is indicative of bad faith.
5.B Respondent5.B.1. As noted above, no Response has been filed by Respondent.
6. Discussion and Findings6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.A Identical or Confusingly Similar6.A.1 From the particulars set out in paragraphs 4.A.2 to 4.A.5, clearly Complainant has rights in the “HMRC” mark. In addition to the trade mark registration (paragraph 4.A.2), the Panel is satisfied that Complainant also has common law rights in that mark (paragraph 4.A.3).
6.A.2 Since the disputed domain name incorporates the “HMRC” mark in its entirety and for the reason summarised in paragraph 5.A.1 above, the Panel finds that the disputed domain name is confusingly similar to that mark. The Panel refers in this respect to sections 1.7 and 1.8 of the WIPO Overview 3.0.
6.A.3 Accordingly, Complainant meets the requirements of paragraph 4(a)(i) of the Policy.
6.B Rights or Legitimate Interests6.B.1 On the basis of the facts and submissions made in the Amended Complaint summarised above and in the absence of a Response, the Panel takes the view that Respondent could not demonstrate any of the circumstances identified in paragraph 4(c) of the Policy as establishing rights to or legitimate interests in the disputed domain name. Additionally, the confusing similarity of the disputed domain name with Complainant’s “HMRC” mark is inconsistent with Respondent having rights to or legitimate interests in that domain name.
6.B.2 Accordingly, Complainant has established its case under paragraph 4(a)(ii) of the Policy.
6.C. Registered and Used in Bad Faith6.C.1 Complainant’s assertion of registration in bad faith is accepted.
6.C.2 The Panel finds that Complainant’s case as to bad faith use summarised in paragraphs 5.A.6 to 5.A.8 above is well made out. The Panel also refers to the holding in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 as in point given the implausibility of any good faith use to which the disputed domain name could be put. See, in that respect, section 3.3 of the WIPO Overview 3.0.
6.C.3 In the circumstances, the Amended Complaint satisfies the requirement of paragraph 4(a)(iii) 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
David Perkins
Sole Panelist
Date: October 27, 2021