WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Thomas E. May, hmrcuk-gov
Case No. D2018-1475
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 Thomas E. May, hmrcuk-gov of Someradale, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hmrcuk-gov.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2018. On July 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, 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 July 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2018.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 20, 2018. 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.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a Response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is The Commissioners for HM Revenue and Customs of London, a non-ministerial department of the United Kingdom Government responsible for the collection of taxes, the payment of some types of state support and the management of other regulatory regimes, owning the following trademark registration for HMRC:
- United Kingdom Trademark Registration No. 2471470 for HMRC, registered on March 28, 2008.
The Complainant operates a website at “www.hmrc.gov.uk”.
The Complainant provided evidence in support of the above.
The disputed domain name <hmrcuk-gov.com> was registered on September 9, 2015, according to the WhoIs records, and it points to a web page providing pay-per-click links mainly related to government job positions.
The Complainant’s agent wrote to the Respondent by letter and email on April 6, 2018 but received no response.
5. Parties’ Contentions
The Complainant states that the disputed domain name <hmrcuk-gov.com> is confusingly similar to its trademark HMRC, as the letters “uk”, which can be understood as the acronym for “United Kingdom”, and the letters “gov”, which can be understood as the contraction for the word “government”, are descriptive and not distinctive.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent has not intended to use or made preparations to use the disputed domain name in connection with a bona fide offer of goods or services, as the disputed domain name is associated with a website resolving to pay-per-click advertising.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark HMRC is distinctive and well known not only within the borders of the United Kingdom. Therefore, the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the webpage with pay-per-click links at the disputed domain name is sufficient on its own for a finding of use in bad faith of the disputed domain name, even if the links were automatically generated.
Moreover, the Complainant cannot see a use of the disputed domain name by the Respondent that would not amount to bad faith and submits that the disputed domain name features characteristics typical of domain names that have been or are being used for phishing emails or other fraudulent use, so that it is reasonable to infer, in the absence of evidence to the contrary, that it is more likely than not that fraud or other illegitimate use was the purpose for which the disputed domain name was registered.
The Respondent has not replied to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007‑0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark HMRC both by registration and acquired reputation and that the disputed domain name <hmrcuk-gov.com> is confusingly similar to the trademark HMRC.
Regarding the addition of the letters “uk” and “gov”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003‑0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the letters “uk” and “gov” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, 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:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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”.
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark HMRC in the field of governmental taxation services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <hmrcuk-gov.com>, because it is confusingly similar to the Complainant’s trademark.
The addition of the letters “uk” and “gov”, in the opinion of the Panel, instead of differentiating the disputed domain name from the Complainant’s trademark, is increasing the likelihood of confusion, especially because the letters “uk” are the acronym of the Complainant’s Country and the letters “gov” are a contraction of the field of activity of the Complainant, a department of the United Kingdom Government: in fact the Complainant’s official website is using as its address a domain name incorporating the same two letterings, “uk” and “gov”, although in a different place than the Respondent in the disputed domain name, that is “www.hmrc.gov.uk” instead of “www.hmrcuk-gov.com”.
Regarding the use in bad faith, the website at the disputed domain name is a page with several pay-per-click links, possibly automatically generated, almost all referring to government job positions. The Panel considers that this use of the website associated with the disputed domain name must be considered to be in bad faith, on the one hand because of the pay-per-click links, even in the case where they are automatically generated, since they are referring to the public sector where the Complainant is operating and are therefore likely to create confusion. On the other hand Internet users are drawn to the Respondent’s website due to the confusing similarity of the disputed domain names with the Complainant’s trademark. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 2.9, 3.5 and 3.2.3.
All of the above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <hmrcuk-gov.com> be transferred to the Complainant.
Date: September 3, 2018