WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. James Gamme
Case No. D2017-0350
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" or "UK"), represented by Demys Limited, United Kingdom.
The Respondent is James Gamme of Holcombe Rogus, United Kingdom.
2. The Domain Names and Registrars
The disputed domain name <hmrcgov.org> is registered with eNom, Inc.
The disputed domain name <hmrcgov.website> is registered with NameCheap, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2017. On February 22, 2017, the Center transmitted by email to eNom, Inc. and NameCheap, Inc. a request for registrar verification in connection with the disputed domain names. On the same date, NameCheap, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. On February 23, 2017, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on April 10, 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 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 UK's public services. The Complainant facilitates legitimate international trade, protects the UK's fiscal, economic, social and physical security before and at the border and collects UK trade statistics. Additionally, the Complainant administers statutory payments within the UK, 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 has a high volume of activity in that almost every UK individual and business is a direct customer of the Complainant.
The Complainant operates a website under the UK Government's <gov.uk> portal at "www.gov.uk/government/organisations/hm-revenue-customs" which can also be accessed through the domain name <hmrc.gov.uk>.
The Complainant is the proprietor of the United Kingdom registered trade mark number 2471470 for HMRC in classes 9, 16, 25, 26, 35, 36, 38, 41, 42 and 45. The mark has a filing date of November 5, 2007, and a registration date of March 28, 2008.
As with other tax authorities, the Complainant 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, by way of example, the use of domain names made up of the Complainant's HMRC mark and one or more generic terms which may be associated with the Complainant, such as "tax", "contact", "advice", "refund", "rebate" or "demand"; the use of visually similar domain names to, or typographical variants of the Complainant's HMRC mark; the use of false contact details on the WhoIs database; and the registration of many domain names in many spaces by a single registrant to allow for the speedy resumption of fraud should a single domain name be put out of action.
The disputed domain names (hereafter the "Domain Names") were registered as follows: <hmrcgov.org> – February 20, 2016, <hmrcgov.website> – February 17, 2016.
Little is known by the Complainant about the Respondent. The Complainant's agent wrote to the Respondent by letter dated January 16, 2017, requesting an explanation for the registration of the Domain Names and seeking their transfer to the Complainant. However, the letter was returned marked "addressee unknown" and "no such address". On January 19, 2017, the Complainant's agent sent an identical letter to the email address listed on the WhoIs database. The email did not bounce back but no response was received.
5. Parties' Contentions
The following is a summary of the main contentions of the Complainant.
The disputed domain names are confusingly similar to trade marks or service marks in which the Complainant has rights
The Complainant is very well known in the United Kingdom and beyond as HMRC. It has over 16,300 "followers" on Facebook and over 350,000 on Twitter.
The Complainant's HMRC mark pre-dates the registration of the Domain Names by at least nine years.
The Domain Names only differ from the Complainant's HMRC mark by the addition of "gov". The term "gov" before the generic Top-Level Domains ("gTLDs") ".org" and ".website" in each of the Domain Names is highly misleading as UK Government departments, including the Complainant, use the suffix ".gov.uk". Thus, the use of "gov" at the end of a domain name is likely to be extremely visually confusing.
The gTLDs ".org" and ".website" are required only for technical reasons and can be ignored for the purposes of comparison of the Complainant's mark to the Domain Names.
The Complainant's HMRC mark is the dominant element of the Domain Names and the addition of "gov" does not distinguish them from it. In fact, it adds to confusion. The Complainant therefore contends that the Domain Names are confusingly similar to its HMRC mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names
The Complainant has found no evidence that the Respondent has been commonly known by the name "HMRC" or "HMRCGOV" prior to or after the registration of the Domain Names. The Respondent is not a licensee of the Complainant and has not been given any permission by the Complainant to use its mark or name. Nor has there been any acquiescence on the part of the Complainant in relation to the Domain Names.
The Complainant has found nothing to suggest that the Respondent owns any trade marks that incorporate or are similar or identical to the phrases "HMRC" or "HMRCGOV". Similarly, the Complainant has found no evidence that the Respondent has ever traded or operated as "HMRC" or "HMRCGOV".
The Domain Names have not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, in terms of paragraph 4(c)(iii) of the Policy. Indeed, the websites associated with the Domain Names have, since registration, remained inactive.
The Complainant contends that it is highly unlikely that the Respondent intended to use the Domain Names for any legitimate or fair use. The Complainant cannot conceive of any use to which they could be put now or in the future that would not infringe the Complainant's rights.
The Complainant also contends that the Domain Names could not be used in any manner without causing widespread confusion given that they are inherently confusingly similar to the Complainant's registered mark and name.
The Complainant is of the view that the Domain Names are "passively held" and, as such, have not been used in connection with a bona fide offering of goods or services. Such passive holding has not been deemed sufficient to establish legitimate interests or bona fide use in prior UDRP decisions.
The disputed domain names were registered and are being used in bad faith
The Complainant contends that the Respondent registered the Domain Names in bad faith and its continuing passive holding of them constitutes use in bad faith. The Complainant refers to the UDRP decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which the panel noted that circumstances indicative of bad faith registration might include: "(i) the Complainant's trademark has a strong reputation and is widely known...
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law."
The Complainant asserts that the circumstances in this Complaint are similar to those in Telstra Corporation Limited v. Nuclear Marshmallows, supra, given:
- that the Complainant is very well known in the United Kingdom and beyond;
- the term "gov" used in the Domain Names, when combined with the Complainant's HMRC mark, does not render the Domain Names generic or dictionary terms or phrases;
- the term "HMRC" relates exclusively to the Complainant and, when combined with "gov", cannot logically be applied to any other entity;
- the gTLDs do nothing to differentiate or distinguish the Domain Names from the Complainant and its HMRC mark or name.
The Complainant contends that it is inconceivable that the Respondent could have registered the Domain Names without the Complainant's mark in mind and their continued passive holding cannot reasonably be viewed as registrations and use in good faith.
Whilst the Domain Names do not presently resolve to active websites, it is possible that they have been used in relation to email services. Although the Complainant is unable to provide evidence of fraudulent use, it submits that each of the Domain Names feature characteristics (as indicated earlier) typical of domain names that have been or are being used for phishing or other fraudulent use, and 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 Domain Names were registered.
Although the Complainant has not put forward evidence of fraud, the Complainant cannot conceive of a reasonable legitimate use for the Domain Names. The HMRC mark has been combined with the non distinguishing term "gov", a term which is closely associated, both visually and descriptively, with the Complainant's activities. Moreover, the Complainant contends that "gov" is a common term used in domain names used for fraudulent purposes.
The Complainant further contends that where it is more likely than not that a domain name is used or is intended to be used for fraud, the registration must be in bad faith.
Neither of the Domain Names feature any clarifying words which make clear the relationship (or, more precisely, the absence of a relationship) between the Complainant and the Respondent. Furthermore, the Respondent cannot be contacted through the postal address on the WhoIs database and the Domain Names do not resolve to active websites.
The Domain Names match a number of criteria which would indicate that it is more probable than not that non-legitimate motives lay behind their registration.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the HMRC trade mark.
Ignoring the gTLD of each Domain Name ".org" and ".website" (as the Panel may do for comparison purposes), the Domain Names comprise the Complainant's HMRC trade mark, followed by the term "gov". As the HMRC trade mark and Domain Names are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trade mark and the domain name in issue. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The HMRC trade mark is clearly recognisable within the Domain Names. The only real issue therefore is whether the term "gov" which follows it, render the Domain Names something other than confusingly similar (to the HMRC mark). In the Panel's view, it does not.
Indeed, given the purpose and status of the Complainant, inclusion of "gov" in the Domain Names is likely to enhance, rather than lessen, the risk of confusing similarity.
Accordingly, the Panel finds that the Domain Names are confusingly similar to the HMRC mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Names. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
A respondent can also show that before any notice of dispute, it was using or had made 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.
It is almost beyond doubt that the Respondent, however hard it might try, would fail to establish rights or legitimate interests in the Domain Names. The Respondent is not known by either of the Domain Names, it has not been given permission to use them, no use has been made of them and it is extremely unlikely that any use that could be made of them would be regarded as legitimate or fair or bona fide or without intent to mislead. The Respondent has not offered any explanation for registration of the Domain Names and that is no doubt because there is nothing much it could say in answer to the Complaint.
There is no evidence before this Panel which suggests that the Respondent has rights or legitimate interests in the Domain Names or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant relies on the Respondent's passive holding of the Domain Names and refers to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which poses the question, "Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?"
The "consensus view" on that question is that "[P]anels 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. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration…."
Although no evidence of fraudulent use has been brought forward, the Complainant also relies on the presence of certain characteristics of nefarious activity to suggest the possibility that some form of illegitimate activity lay behind registration of the Domain Names.
Whatever the motives behind registration of the Domain Names and despite their non-use, the Panel has no hesitation in finding that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names in bad faith. The Respondent clearly knew of the Complainant's well-known HMRC mark and combined it with a term ("gov") to add to its confusing similarity thereby creating inherently misleading Domain Names which could easily be used for improper purposes. In these circumstances, it is incumbent on the Respondent to come forward with an explanation for the registrations if it is to have any prospect of avoiding an adverse finding under the Policy. Yet, the Respondent chose not to do so. It made no attempt to demonstrate rights or legitimate interests, did not participate in these proceedings or bother to respond to communications sent on behalf of the Complainant, or the Center.
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 <hmrcgov.org> and <hmrcgov.website> be transferred to the Complainant.
Date: April 19, 2017