WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. Domain Privacy, Domain Privacy ApS / Keris Patih / National Insurance

Case No. D2017-0533

1. The Parties

The Complainant is The Commissioners for HM Revenue and Customs of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.

The Respondent is Domain Privacy, Domain Privacy ApS of Copenhagen, Denmark / Keris Patih of Riau, Indonesia / National Insurance of Jambi, Indonesia.

2. The Domain Names and Registrar

The disputed domain names <gateway-hmrc.com>, <hmrc-duty.com>, <hmrcgovernment.com>, <hmrc‑taxrefundonline.com>, and <web-hmrc.com> are registered with Ascio Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2017. On March 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 17, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2017, 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 March 30, 2017.

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 April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2017.

The Center appointed Ellen B Shankman as the sole panelist in this matter on April 28, 2017. 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 Panel has evaluated each disputed domain name separately, and the Panel accepts as evidenced the following details regarding the five disputed domain names:

The dates of the five different disputed domain names’ registrations were confirmed by the Registrar to be November 2 and 3, 2016 respectively as identified in Section 6.1 below. None of the disputed domain names resolve to an active website.

The Complainant provided evidence of United Kingdom trademark registration No. 2471470 in classes 9, 16, 25, 26, 35, 36, 38, 41, 42 and 45 for the mark HMRC (registered on March 28, 2008) for a wide variety of goods and services, including tax collection and financial services that predate the date of the disputed domain names’ registrations.

The Complainant also provided evidence of sending a cease-and-desist letter before commencing the proceedings, to which the Respondent has not answered.

Since the Respondent did not respond to this Complaint as well as the non-response to the cease-and-desist letter, the reasonable assertions regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

5. Parties’ Contentions

A. Complainant

According to the Complaint, 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 is accountable for safeguarding the flow of money to the Exchequer through its collection, compliance and enforcement activities and through these activities it ensures that money is available to fund the United Kingdom’s public services. The Complainant facilitates legitimate international trade, protects the United Kingdom’s fiscal, economic, social and physical security before and at the border and collects United Kingdom trade statistics. Additionally, the Complainant administers statutory payments within the United Kingdom, such as statutory sick pay and statutory maternity pay and it helps families and individuals with targeted financial support through the payment of tax credits.

The Complainant is a high-volume business; almost every United Kingdom individual and business is a direct customer of the Complainant and it aims to administer the United Kingdom’s tax system in the simplest, customer focused and efficient way.

The Complainant’s ultimate predecessor was the Board of Taxes which was founded in 1665 under Charles II. It was renamed the Board of Inland Revenue under the Inland Revenue Board Act, 1849. The Complainant in its present form was created by the merger of the Inland Revenue and HM Customs and Excise in April 2005 in terms of the Commissioners for Revenue and Customs Act, 2005 (see: “http://www.legislation.gov.uk/ukpga/2005/11/contents”).

The Complainant operates a website under the United Kingdom Government’s “.gov.uk” portal at “www.gov.uk/government/organisations/hm-revenue-customs”. This site can also be accessed through the domain name <hmrc.gov.uk>. While Government policy is to depreciate departmental domain names and migrate sites to the “.gov.uk” portal, <hmrc.gov.uk> remains an important access point to the Complainant.

The Complainant notes that, as with other tax authorities, it and its customers are frequently targeted by phishing and other online scams. The Complainant observes that there are several characteristics which are common to domain names that have been used to target the Complainant for fraudulent or other abusive purposes; these include, but are not limited to, the use of domain names made up of the Complainant’s mark and one or more generic terms, such as in this case.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark HMRC in respect of a broad range of goods and services related to its remit. The disputed domain names are confusingly similar to the trademark owned by the Complainant. The addition of the terms “gateway”, “duty”, “government”, “tax refund online” and “web” in the respective disputed domain names does not prevent a finding of confusing similarity. Therefore, the disputed domain names could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The disputed domain names were registered and are being used in bad faith, even with passive holding. That continued use of the disputed domain names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, including for illegal phishing and other unlawful purposes. Thus, the Respondent’s registrations and use of the disputed domain names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Matter: Consolidation of Respondent

The Complainant notes the following points of similarity which would indicate the disputed domain names are subject to common control:

- Each disputed domain name uses the same registrant email address.

- Each disputed domain name uses the same telephone number with the country code of Indonesia.

- Each disputed domain name uses the same nameservers, i.e., “ns01.one.com” and “ns02.one.com”.

- Each disputed domain name is registered through the same Registrar, Ascio Technologies, Inc.

- Each of the disputed domain names was registered within a day of each other (see table below).

- Each of the disputed domain names is very similar in character featuring words and phrases closely related to the Complainant (see further discussion under Rights below).

- Each disputed domain name does not resolve to an active website (see table below for summary).

- All the disputed domain names are in the “.com” Top-Level Domain names spaces.

Each of the disputed domain names resolves to a page with an error message, and none of the disputed domain names resolve to any active website.

Accordingly, the Panel finds that there is sufficient evidence on balance to demonstrate that the five disputed domain names are controlled by the same entity for purposes of consolidation of this case. Further, the Panel will refer to all five disputed domain names hereinafter as “the Domain Names”.

6.2. Substantive Matters

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for HMRC.

The Panel finds that each and all of the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the identified descriptive terms to the Domain Names does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark and if anything, enhances it to suggest the misleading connection with the Complainant. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names, (and which also informs the third element of the Policy discussed further below).

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark and for improper uses.

Even where the Domain Names resolve to “error” pages, the Panel does not believe that it changes the finding. As stated in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. […] Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed […]. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

The Panel also finds compelling the Complainant’s argument that where, as in this case, the Respondent has failed to show rights or legitimate interests in the Domain Name in issue, registration and use in bad faith can commonly be inferred. See Imerys v. Unknown (gfg fdgdf, dfgdfg), WIPO Case No. D2007-0045. The Respondent appears to have acquired the Domain Names for no legitimate purposes.

In addition, the Respondent originally obtained the Domain Names under privacy protection. The use of privacy protection, when a domain name makes unauthorized use of a third-party trademark, canbe further evidence of bad faith. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

Accordingly, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, 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 Domain Names, <gateway-hmrc.com>, <hmrc-duty.com>, <hmrcgovernment.com>, <hmrc-taxrefundonline.com>, and <web-hmrc.com>, be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: May 12, 2017