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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Affin Affin, Affin Connect

Case No. D2019-1371

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) and Affin Affin, Affin Connect, United States.

2. The Domain Name and Registrar

The disputed domain name <hmrcukgov.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2019, 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 June 24, 2019, 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 June 24, 2019.

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 June 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2019.

The Center appointed Andrew F. Christie as the sole panelist in this matter on August 16, 2019. 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 Government responsible for the collection of taxes, the payment of some forms of state support, and the administration of other regulatory regimes. The Complainant, in its present form and with its current name, 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. As the United Kingdom Government’s tax authority, almost every United Kingdom individual and business is a direct customer of the Complainant and a user of its services.

The Complainant is the owner of a number of United Kingdom trademark registrations, including number 2471470 for the word trademark HMRC, filed on November 5, 2007, registered on March 28, 2008, and number 3251234 for the design mark of a crown in a circle and the words “HM Revenue & Customs”, filed on August 18, 2017, registered on December 29, 2017.

The Complainant operates a website within the United Kingdom Government’s official portal which can be accessed through the domain name <hmrc.gov.uk>.

The disputed domain name was registered on August 4, 2018. It does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it only differs by the addition of the initialisms of “uk” and “gov”; (ii) it is reasonable to contend that the first initialism is a contraction of “United Kingdom” and is a common initialism of that country’s name; (iii) the Complainant is a Government department of the United Kingdom and so the term “uk” is closely connected and associated with the Complainant; (iv) it is likely on balance that the term “gov” was intended as a contraction of the word “government” which is a term commonly used by governments to denote a website related to governmental business; (v) the Complainant’s mark is the most dominant element of the disputed domain name and the additional adornments do not distinguish it from the Complainant’s marks; and (vi) the top-level domain (“TLD”) “.com” is required for technical reasons and can be ignored for the purposes of comparison of the Complainant’s mark to the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has found no evidence that the Respondent has been commonly known by the name HMRCUKGOV prior to, or after, registration of the disputed domain name; (ii) the Respondent is not a licensee of the Complainant and has not received any permission, consent or acquiescence from the Complainant to use its marks or name in association with the registration of the disputed domain name, or indeed, any domain name, service or product; (iii) the Complainant has found nothing to suggest that the Respondent owns any trademarks that incorporate or are similar or identical to the terms HMRC or HMRCUKGOV, or that it has ever traded as such; (iv) the disputed domain name has not been used in connection with any legitimate noncommercial or fair use as the website associated with it has remained inactive since registration; (v) the disputed domain name has configured “Mail eXchanger” (“MX”) records so that if the Respondent was to send email from the disputed domain name web users would be likely to assume that it had been sent by the Complainant; (vi) it is highly unlikely that the Respondent intended to use the disputed domain name for any legitimate or fair use as the Complainant cannot conceive of any use to which it could be put that would not infringe the Complainant’s rights; and (vii) the disputed domain name is inactive and “passively held” and, as such, has not been used in connection with a bona fide offering of goods or services.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent’s passive holding constitutes bad faith, particularly as the Complainant is very well known, the Respondent has not published a website and has redacted its contact details on the public WhoIs, and it is inconceivable that the Respondent registered the disputed domain name without the Complainant’s marks in mind and with bona fide, good faith intentions; (ii) the disputed domain name features characteristics typical of a domain name that has been, or is being, used for phishing emails or other fraudulent use; and (iii) the disputed domain name combines the Complainant’s HMRC marks with the additional non-distinguishing initialisms “uk” and “gov”, and does not feature any clarifying words which make clear the relationship (or non-relationship) between the Complainant and the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the TLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark HMRC and the string “ukgov”. The Complainant’s word trademark HMRC is the dominant element of the disputed domain name. The addition of the string “ukgov”, which Internet users are likely to read as being an abbreviation of “United Kingdom Government”, does not lessen the confusing similarity of the disputed domain name with the Complainant’s word trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its HMRC trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The disputed domain name consists of the dominant component of the Complainant’s HMRC trademark with the addition of the string “ukgov”, which in this case carries a risk of implied affiliation, given that the Complainant is a department of the Government of the United Kingdom (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1). The evidence provided by the Complainant shows that the disputed domain name does not resolve to an active website but is configured with MX records that allow it to be used to send emails that Internet users could well assume were sent by the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its HMRC trademark. The evidence on the record provided by the Complainant with respect to the use of its HMRC trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. As section 3.3 of the WIPO Overview 3.0 explains, since inception of the UDRP panelists have found that the non-use of a domain name does not prevent a finding of use in bad faith under the doctrine of passive holding. The factors that panels have considered relevant in determining if a passive holding of a domain name amounts to use in bad faith include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, the respondent’s concealment of its identity, and the implausibility of any good faith use to which the domain name might be put. In this case, the Complainant’s HMRC trademark has a solid degree of distinctiveness and a high degree of reputation in the United Kingdom, the Respondent has not provided any evidence of actual or contemplated good faith use (indeed, has not submitted any response), the Respondent appears to have sought to conceal its true identity, and the Panel is unable to conceive of a realistic good faith use to which the Respondent could put the disputed domain name. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <hmrcukgov.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: August 30, 2019

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