WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Wei Wang, APIS
Case No. D2017-1492
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 Wei Wang, APIS of Nanaimo, British Columbia, Canada.
2. The Domain Names and Registrar
The disputed domain names <hmrc-tax-service.com>, <service-hmrc-tax.com>, and <tax-hmrc-service.com> (collectively the "Domain Names") are registered with 1&1 Internet SE (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 2, 2017, 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 August 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 31, 2017.
The Center appointed John C McElwaine as the sole panelist in this matter on September 6, 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 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 is the owner of the mark HMRC, including United Kingdom Registration No. UK00002471470 for the mark HMRC in standard character covering goods and services in International Classes 9, 16, 25, 26, 35, 36, 38, 41, 42, and 45, registered on March 28, 2008.
Respondent resides in Canada. On January 26, 2017, Respondent registered <tax-hmrc-service.com>, on January 29, 2017, Respondent registered <hmrc-tax-service.com>, and on January 31, 2017, Respondent registered <service-hmrc-tax.com>. The Domain Names do not resolve to active websites.
5. Parties' Contentions
Complainant contends that the Domain Names should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established.
Complainant's ultimate predecessor in interest, the Board of Taxes, was founded in 1665 under Charles II. The Board of Taxes was renamed the Board of Inland Revenue under the Inland Revenue Board Act, 1849. The Commissioners for HM Revenue and Customs, Complainant, was created in its present form in 2005 when the Board of Inland Revenue merged with HM Customs and Excise under the terms of the Commissioners for Revenue and Customs Act, 2005. 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. Complainant is accountable for safeguarding the flow of money to the Exchequer through its collection, compliance and enforcement activities and through these activities ensures money is available to fund the United Kingdom's public services. Complainant facilitates legitimate international trade, protects the United Kingdom's fiscal, economic, social and physical security before and at the border and collects United Kingdom trade statistics. Complainant is a high-volume business in which nearly every United Kingdom individual and business is a direct customer of Complainant as Complainant is responsible for the administration of the United Kingdom's tax system.
Complainant asserts that Complainant's HMRC mark is well known. Complainant registered its HMRC mark with the United Kingdom Trademark Office in 2008 for various products and services in International Classes 9, 16, 25, 26, 35, 36, 38, 41, 42, and 45. Complainant is also the owner of the <hmrc.gov.uk> domain name.
Complainant further contends that it has successfully asserted its rights in the HMRC mark in previous UDRP cases (see The Commissioners for HM Revenue and Customs v. James Gamme, WIPO Case No. D2017-0350; The Commissioners for HM Revenue and Customs v. Dani Gan, WIPO Case No. D2017-0357; The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501; The Commissioners for HM Revenue and Customs v. Gogel David and Robert Morrison, WIPO Case No. D2017-0520; The Commissioners for HM Revenue and Customs v. Domain Privacy, Domain Privacy ApS / Keris Patih / National Insurance, WIPO Case No. D2017-0533; The Commissioners for HM Revenue and Customs v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0545).
On July 12, 2017, Complainant's counsel sent a letter to Respondent concerning Respondent's use and registration of the Domain Name. Complainant asserts that it has not received a response to this letter.
With respect to the allegations directed toward Respondent, Complainant initially points out that the Domain Names were registered January 26, 29, and 31, 2017, years after Complainant had begun using its HMRC mark and long after Complainant had registered its HMRC mark in the United Kingdom. Complainant asserts that there is no relationship between it and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Names.
Complainant contends that the Domain Names should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Addressing the first element of the Policy, Complainant asserts rights in the HMRC mark based on its use of the mark in the United Kingdom since 2005 and subsequent registration of the mark in 2008, and its use of the HMRC mark in connection with the <hmrc.gov.uk> domain name. Complainant alleges that the addition of various combinations of the words "tax" and "service", which merely describe the products and services provided by Complainant, and the Top-Level Domain ".com", does little to distinguish the Domain Names from Complainant's HMRC mark. As a result, Complainant avers that the Domain Names are confusingly similar to its common law and registered HMRC mark.
With respect to the second element of the Policy, Complainant contends that there is no evidence that Respondent has rights or a legitimate interest in the Domain Names because registration of the Domain Names occurred after Complainant had made extensive use of the HMRC mark and after Complainant had obtained a registration for the HMRC mark in the United Kingdom. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the HMRC mark, there is no relationship between the Parties, and nothing in the record, including the WhoIs information, suggests that Respondent is commonly known by the Domain Names.
With respect to the third element of the Policy, Complainant alleges that Respondent's passive holding of the Domain Names is evidence of registration and use of the Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy. Complainant further asserts that Respondent's failure to respond to Complainant's July 12, 2017 letter requesting that Respondent agree to voluntarily transfer the Domain Names to Complainant is evidence of bad faith. Lastly, Complainant contends that, while presently unknown, it is possible that the Domain Names are being used in relation to email services for use in connection with fraudulent activities (i.e., use in connection with phishing emails).
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Because of Respondent's default, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. Complainant has provided evidence that it is the owner of a United Kingdom trademark registration for the HMRC mark since March 2008. Complainant has also provided evidence showing that third parties in the United Kingdom and elsewhere often refer to Complainant as HMRC. The Panel finds that Complainant owns trademark rights in the HMRC mark, which predate the registration of the Domain Names.
It is well established that the addition of a descriptive word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Here, Respondent has used various combinations of the HMRC mark and the words "tax" and "service".
The Panel finds that Complainant has met its burden of showing that the Domain Names are confusingly similar to the HMRC mark in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. However, because the nature of a registrant's rights or legitimate interests, if any, in its domain names lies most directly within the registrant's own knowledge, a complainant need only make a prima facie case on this element. See Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703. The burden of production shifts then to the respondent to present evidence that it has some rights or legitimate interests in the domain names. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant asserts that Respondent is not a licensee or affiliate of Complainant and Respondent is not authorized to use the HMRC mark for any activity. Furthermore, Respondent does not have any registered trademarks or trade names corresponding to the Domain Names. Neither has Complainant found anything that would suggest that Respondent has been using the Domain Names in any other way that would provide any legitimate rights. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain names. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to a complaint, it can be assumed in appropriate circumstances that such respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Accordingly, Complainant has made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate.
The Panel finds that Respondent does not have rights or legitimate interests in the Domain Names and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent "knew or should have known" of a complainant's trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant's submissions, which were not rebutted by Respondent, Respondent must have known of Complainant's HMRC mark when it selected to register the Domain Names, which all contain reference to "tax services". There is no explanation for Respondent to have chosen to use such related terms related to Complainant's purpose in each of the Domain Names other than to trade off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.
The fact that the Domain Names do not resolve to websites and are being passively held does not obviate a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three-member panel, in Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
(i) the complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant's communications before the proceedings; and
(v) the respondent did not reply to the complainant's contentions.
Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Names. In fact, Respondent is not using the Domain Names in any manner to demonstrate a bona fide use or potential use. However, it is clear that the Domain Names were chosen to draw an association with Complainant. In light of these factors, the Panel finds that Respondent's passive holding of the Domain Names satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Names are being used in bad faith by Respondent.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith.
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 <hmrc-tax-service.com>, <service-hmrc-tax.com>, and <tax-hmrc-service.com> be transferred to Complainant.
John C McElwaine
Date: September 20, 2017