WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Domain Admin, Whois Privacy Corp.
Case No. D2017-0545
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 Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <hmrctax-refunds.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 March 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on April 24, 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 Complainant is a non-ministerial department of the United Kingdom (“UK”) government, responsible among other duties for collecting taxes, payment of some forms of state support, and administration of various regulatory regimes. The Complainant asserts registered rights in the HMRC mark. The Complainant is the owner of a United Kingdom registration for the HMRC mark (registration number UK00002471470), applied for on November 5, 2007, and registered on March 28, 2008.
The Complainant maintains an official website under the UK Government’s <gov.uk> portal accessible at “www.gov.uk/government/organisations/hm-revenue-customs”. The Complainant also uses the domain name <hmrc.gov.uk> with its website. The Complainant’s HMRC mark is well known: Virtually all UK individuals and businesses have dealings with the Complainant.
The Respondent registered the disputed domain name <hmrctax-refunds.com> on October 16, 2016. The disputed domain name resolves to a parking page, which has been populated with tax- related “sponsored listings”. A number of these links appear to make reference the Complainant. Examples include: “Hmrc Tax Return”,”Hmrc Gov UK”, “Hmrc Self Assessment Form”, “Hmrc”, “HMRC Tax Rebate Address”, and “VAT Helpline Hmrc”.
The Complainant by mail and email sent a notice letter to the Respondent on February 15, 2017, to which the Complainant received no reply. The Complainant then brought this proceeding under the Policy.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s HMRC mark. The Complainant observes that the disputed domain name incorporates the Complainant’s HMRC mark in its entirety, differing only by the addition of the term “tax-refunds”. The Complainant asserts that this term is entirely generic and descriptive, and is “inextricably linked” with the Complainant, since the administration of tax refunds is one of the Complainant’s key roles. The Complainant maintains that it is very well known in the United Kingdom and beyond by the HMRC name and mark. The Complainant submits that the results of a search for the term “hmrc” on the search engine “www.google.uk” all relate to the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains there is no evidence that the Respondent has been commonly known by the disputed domain name, that the Respondent has not been licensed to use the Complainant’s HMRC mark, and that the Complainant has not consented to or acquiesced in the Respondent’s unauthorized use of the Complainant’s mark.
The Complainant further submits that the Respondent has not used the disputed domain name in connection with any legitimate noncommercial or fair use. The Complainant asserts that the Respondent’s is seeking to exploit and profit from the Complainant’s HMRC mark by diverting Internet users to the Respondent’s pay-per-click parking page. The Complainant maintains this does not constitute use or demonstrable preparations to use the dispute domain name in connection with a bona fide offering of goods or services.
In light of the foregoing, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith, by intentionally creating for commercial gain a likelihood of confusion with the Complainant’s HMRC mark. The Complainant further asserts that the Respondent more likely than not registered the disputed domain name for phishing or other fraudulent uses. While the Complainant acknowledges having no direct evidence of the Respondent’s fraudulent use of the disputed domain name, the Complainant explains that it and its customers are frequently targeted by phishing and other online scams, and that the disputed domain name features characteristics typical of domain names that have been used in furtherance of such fraudulent schemes. The Complainant also contends that the Respondent’s use of a privacy protection service is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
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, UDRP 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) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the 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.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s HMRC mark, in which the Complainant has established rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant’s mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant’s HMRC mark is clearly recognizable in the disputed domain name, and the addition of the words “tax-refunds” does not serve to dispel confusing similarity, and may well enhance the likelihood of confusion. Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the Complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s mark, and which resolves to a parking page with “sponsored listings” offering tax-related services using the Complainant’s HMRC mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the totality of circumstances reflected in the record, it is evident that the Respondent was aware of the Complainant and had the Complainant’s HMRC mark in mind when registering the disputed domain name. The Respondent is using the disputed domain name to divert Internet visitors to the Respondent’s website. Internet visitors could easily expect that the website they have arrived at is affiliated with or endorsed by the Complainant. The Respondent’s website contains no disclaimer of any such affiliation.
The Respondent has brought forward no evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is there any evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. There is nothing in the record to support any claim by the Respondent to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. As noted above, it is undisputed that the Respondent has not been authorized to use the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to profit therefrom. The record clearly reflects the Respondent’s opportunistic and bad faith targeting of the Complainant and its HMRC mark. 1
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 <hmrctax-refunds.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: May 8, 2016
1 The Panel notes that the Complainant has gone to considerable effort to document the frequency with which the Complainant and its customers are targeted by phishing and online scams, as well the Complainant’s ongoing activities in combating phishing and other tax-related fraud. While the Complainant identifies the disputed domain name as having characteristics typical of domain names that have been used in furtherance of fraudulent schemes targeting the Complainant or its customers, there is no evidence in the record of this case that the disputed domain name has been used in such a manner. See The Commissioners for HM Revenue and Customs v. Dani Gan, WIPO Case No. D2017-0357.