WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Dani Gan
Case No. D2017-0357
1. The Parties
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.
Respondent is Dani Gan of Allambie Heights, Australia.
2. The Domain Name and Registrar
The disputed domain name <hmrconlinegov.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2017. On February 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 29, 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
Complainant, The Commissioners for HM Revenue and Customs, 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. Complainant owns and uses the name and trademark HMRC and has provided as Annex 7 to the Complaint details of its UK registration (No. 2471470) for HMRC that issued to registration on March 28, 2008. Complainant also operates a website that can be accessed at <hmrc.gov.uk>.
The disputed domain name <hmrconlinegov.com> was registered on October 2, 2016. Currently, the disputed domain name resolves to a web page that includes references to Complainant and links to other websites.
On or about January 12, 2017, Complainant’s counsel sent a demand letter to Respondent regarding Respondent’s registration of the disputed domain name and requested the transfer of such. A further letter was sent to Respondent via email on January 19, 2017. Respondent apparently did not respond to either letter.
5. Parties’ Contentions
Complainant contends that because it is a non-ministerial department of the UK Government responsible for collecting taxes, the payment of some forms of state support and the administration of other regulatory regimes almost every UK individual and business is a direct customer of Complainant. As a result, Complainant maintains that it is well-known in the United Kingdom and beyond, and, in particular, is known by the name and mark HMRC. As a result of such notoriety, Complainant argues that Complainant and its customers are frequently targeted by phishing and other online scams and that in many circumstances domain names with similar types of characteristics as the disputed domain name have been used for such schemes.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s HMRC mark, for which it owns a multi-class trademark registration in the UK, because it contains the HMRC mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive word “online” and the abbreviation “gov” (for “government”) heightens the confusion and suggests a connection of the disputed domain name with Complainant. In particular, Complainant argues that the use of “gov” before the “.com” extension is visually confusing as it plays upon the use of “gov.uk” by numerous UK Government departments, including Complainant. In addition, the use of the word “online” in combination with HMRC suggests the well-known portal service provided by Complainant at <online.hmrc.gov.uk>.
Complainant argues that (i) because it has established prior rights in and to the HMRC mark, (ii) there is no evidence showing that Respondent is commonly known by the names “HMRC” or “hmronlinegov”, and (iii) Complainant has not licensed or authorized Respondent to register the disputed domain name, Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant further contends that Respondent has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead has registered and used the disputed domain name for commercial gain by way of pay-per-click advertising.
Finally, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith as the cumulative evidence makes it more likely than not that Respondent has registered the disputed domain name to take advantage of Complainant’s rights in HMRC or for a fraudulent purpose. Complainant argues that this is particularly the case as Respondent has combined the HMRC mark with the non-distinguishing words “online” and “gov” which are closely associated with Complainant’s activities and are common terms that often have been incorporated in domain names that have been used for fraudulent activities. Complainant further contends that Respondent has acted in bad faith by registering and using the disputed domain name with a pay-per-click advertising website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) states:
“4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant…. [T]he complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns a trademark registration for the HMRC mark in the UK since March 2008. Complainant has also provided evidence showing that third parties in the UK and elsewhere often refer to Complainant as simply HMRC.
With Complainant’s rights in the HMRC mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to the HMRC mark as it incorporates the HMRC mark in its entirety in the disputed domain name. The addition of the terms “online” and “gov” does not distinguish the disputed domain name from Complainant’s HMRC mark and in fact suggests that the disputed domain name relates to Complainant and/or is an official online presence for Complainant’s services. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the HMRC mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The record in this case includes no evidence that Respondent has any rights or legitimate interests in the disputed domain name. Since registering the disputed domain name in October 2016, Respondent has not made any bona fide or fair use of the disputed domain name in connection with any products or services. Rather, it appears that Respondent has placed, or allowed to be placed, a web page at the disputed domain name that includes click-through advertising concerning Complainant, its services, income tax filing, pensions and government insurance. As Respondent has chosen not to respond in this proceeding, the Panel can only conclude, based on the available evidence, that Respondent did not register the disputed domain name for any legitimate purpose, but actively sought to capitalize on Complainant’s HMRC mark by registering a domain name that would likely be seen as related to Complainant or Complainant’s services.
It should also be noted that despite having received two demand letters from Complainant, Respondent never responded and simply continued his use of the disputed domain name with a linking portal replete of links that relate to Complainant and its services. Such failure to respond and continued use of the disputed domain name further underscores Respondent’s lack of rights or legitimate interests in the disputed domain name.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain name. As Respondent, although given an opportunity to present his case, has decided not to submit a Response and put forward arguments as to why he should be regarded as having rights or legitimate interests in the disputed domain name, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant’s prima facie case. Complainant thus prevails on this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered a domain name that fully incorporates Complainant’s HMRC mark with the terms “online” and “gov”. Such combination of the HMRC name and mark with common terms that each can be seen as related to Complainant and/or its many services creates a likelihood of confusion by suggesting to consumers that the disputed domain name is somehow related to Complainant. Given that Respondent registered the disputed domain name and used it (or allowed it to be used) with a website full of references to Complainant and the very services offered by Complainant, it is hardly conceivable that Respondent registered such a confusing domain name by chance. If anything, the evidence suggests that Respondent specifically targeted Complainant and its HMRC mark, and did so opportunistically and in bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
As to whether the disputed domain name has been used for fraudulent activity, the Panel cannot determine, based on the evidence submitted, whether there has been use of the disputed domain for a fraudulent scheme. While Complainant makes a compelling case that Complainant and its customers have been the victim of past phishing and other online scams, no evidence was submitted showing that the disputed domain name, in fact, has been used for such a fraudulent purpose. Thus, although the disputed domain name may have all of the indicia of being a candidate for a fraudulent scheme, the Panel cannot, at this juncture, simply conclude as much without any evidence.
Nevertheless, based on the evidence submitted, Respondent’s use of the disputed domain name with a click-through portal, Respondent’s failure to respond to demand letters sent by Complainant and his decision to default in this proceeding, the Panel concludes that Respondent registered and used the disputed domain name in bad faith and that Complainant succeeds under this element of the Policy.
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 <hmrconlinegov.com> be transferred to Complainant.
Date: April 17, 2017