WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Mark Carver
Case No. D2018-1200
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 Mark Carver of Dundee, Scotland, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <hmrc-gateway-gov.online>, <hmrc-tax-gateway.online>, <hm-revenue-tax.online>, <refund-hmrc-gov.online>, and <refund-hmrc.online> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 31, 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 June 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 5, 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.
4. Factual Background
The Complainant is a department of the United Kingdom Government responsible for the collection of taxes and associated activities. The Complainant in its present form was created in 2005 by the merger of the Inland Revenue, and HM Customs and Excise, under the Commissioners for Revenue and Customs Act, 2005. The Complainant also 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.
Nearly every person and business in the United Kingdom is a direct customer of the Complainant. The Complainant operates a website that can be accessed through the domain name <hmrc.gov.uk> and specific sub-domains. The Complainant and its customers are frequently targeted by numerous types of phishing and other online scams.
The Complainant holds the following registered trademark:
HMRC, word mark, United Kingdom Intellectual Property Office (“UKIPO”), filed November 5, 2007, registered March 28, 2008, registration number 2471470, classes 9, 16, 25, 26, 35, 36, 41, and 45.
Nothing is known about the Respondent except for such details as were provided to the Registrar for the purpose of registration of the disputed domain names, which were registered on the following dates:
January 24, 2018
January 24, 2018
February 21, 2018
February 21, 2018
January 24, 2018
The disputed domain names do not resolve to active websites.
5. Parties’ Contentions
The Complainant has produced a copy of UKIPO online documentation recording its registration of the trademark HMRC and asserts also unregistered rights in the same mark through extensive public usage and media commentary nationally and internationally.
The Complainant says the disputed domain names containing the textual element “hmrc” are confusingly similar to its trademark HMRC, and that additional words such as “gov”, “refund”, “revenue” and “tax” do not detract from confusing similarity but increase it, owing to their relevance to taxation.
In respect of the disputed domain name <hm-revenue-tax.online>, which does not contain “hmrc”, the Complainant says that in the context of the Respondent’s other disputed domain names and the additional words “revenue” and “tax”, which relate directly to the Complainant and its activities, this disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant says it has found no evidence that the Respondent has been commonly known as “hmrc” alone or in combination. The Respondent is not a licensee of the Complainant and has not been permitted or licensed to use the Complainant’s trademark. There is no evidence the Respondent has held or operated under any trademark similar to the Complainant’s. The disputed domain names have not received any legitimate noncommercial or fair use without intent for commercial gain. The disputed domain names do not appear to have resolved to any active websites.
The Complainant says it cannot conceive of any potential use of the disputed domain names that would not infringe the Complainant’s rights.
The Complainant submits that it has asserted a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain names.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith.
The Complainant says the disputed domain names are passively held, which does not preclude a finding that they are in fact in use. The Complainant says its trademark is distinctive, very well known and of many years standing. The Respondent has not submitted any Response or provided any evidence of actual or contemplated use in good faith of the disputed domain names, and would be expected to do so if its intentions were bona fide. The Respondent has concealed or falsified its identity and contact details. The disputed domain names could only reasonably refer to the Complainant and there is no plausible good faith use of them by the Respondent.
The Complainant alleges that, despite a lack of direct evidence as to the use of the disputed domain names, they follow a pattern of the similar use of similar domain names for fraudulent purposes. They have the characteristics of other email addresses that have been used in the past for phishing or other fraudulent purposes. The Complainant submits 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 names were registered”. The Complainant says this inference is strengthened by the use in the disputed domain names of words, in addition to the Complainant’s trademark, that relate to the Complainant and its activities, such as “gov”, “refund”, “revenue” and “tax”, and also by the absence of any words that would project a contrary meaning.
The Complainant has cited previous decisions under the Policy that it considers to support its position, including cases in which the Complainant has prevailed.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant must first establish within the meaning of paragraph 4(a)(i) of the Policy that there is a “trademark or service mark in which the complainant has rights”. This may include an unregistered trademark.
The Panel is satisfied by the evidence produced that the Complainant has rights under the Policy in the trademark HMRC. Each of the disputed domain names <hmrc-gateway-gov.online>, <refund-hmrc.online>, <hmrc-tax-gateway.online> and <refund-hmrc-gov.online> features the entirety of the Complainant’s trademark in the company of one or more of the words “gateway”, “gov”, “refund” and “tax”, thereby creating an impression of representing the well-known statutory activities of the Complainant. The Panel finds each of the disputed domain names <hmrc-gateway-gov.online>, <refund-hmrc.online>, <hmrc-tax-gateway.online> and <refund-hmrc-gov.online> to be confusingly similar to the Complainant’s trademark HMRC.
Generally, the generic Top-Level Domain (“gTLD”), in this case “.online”, is disregarded in the determination of confusing similarity with a trademark. In this case the Panel additionally finds the Respondent’s choice of the gTLD “.online” to exacerbate positively the scope for confusion with the Complainant, because of the drive for tax and related statutory transactions to be completed as far as possible by clients through online facilities. In other words, the gTLD “.online” is in keeping with a colloquial concept of “the tax department online”.
The disputed domain name <hm-revenue-tax.online> does not contain the trademark HMRC. This has been met with before, concerning the domain names <hmrevenuecustom.com>, <hmrevenuecustomes.com> and <hmrevenuecustomstaxrefund.com> (The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501). Whilst previous decisions under the Policy do not constitute precedent, especially as to findings of fact, the Panel similarly finds in this case that the name “HM Revenue and Customs”, which is liberally used across the Complainant’s websites, so distinctively identifies the well-known Complainant as to have the status of a common law trademark for the purposes of the Policy. The component “hm-revenue” of the disputed domain name <hm-revenue-tax.online> is found to be confusingly similar to the Complainant’s common law trademark “HM Revenue and Customs”. Confusing similarity is found to be enhanced by the significant additional word “tax” and by the choice of the gTLD “.online”.
The Panel finds for the Complainant in respect of all five disputed domain names under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant and has not been permitted to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to seek to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the administrative proceeding, the complainant must prove that each of these three elements are present”.
The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
Whilst it is for the Complainant to prove its case, the Panel is entitled to draw reasonable inference from the Respondent’s failure to answer the Complainant’s prima facie case (Rules, paragraph 14(b)). There has been no evidence that the Respondent has used the disputed domain name in connection with any bona fide business or has been commonly known by any of the disputed domain names. There is no evidence that the disputed domain names have been used in any legitimate noncommercial or fair way without intent for commercial gain. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent. Paragraph 4(b)(iv) of the Policy is pertinent in this instance:
“(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”.
The disputed domain names do not resolve to any website and need not do so in the terms of paragraph 4(b)(iv) of the Policy, which refers to a website or “other on-line location”. The Complainant believes, on past experience with other attempts to appropriate its trademark in domain names, that the Respondent’s intention is to use the disputed domain names for fraudulent activities such as phishing (surreptitiously inducing victims to reveal financial and personal details of potential value). Strong evidence would be needed to support such an allegation and the Complainant concedes that it has none, but none is necessary. It is sufficient to conclude that any conceivable use of any of the disputed domain names, whether as an email address or otherwise, would carry a high probability of inducing any recipient or visitor to be confused into believing erroneously, at least initially, that it represented or had the endorsement of the Complainant. It is not conceivable that the Respondent has invested both the cost and the intellectual effort in the disputed domain names with any other expectation than ultimate financial gain. Accordingly the Panel finds the disputed domain names to have been registered in bad faith.
There is no evidence the disputed domain names have been used for websites, however their use as email addresses would not be widely visible in the absence of complaints. Nevertheless, the concept of “use” under the Policy has long been interpreted to encompass passive holding where warranted on the totality of the evidence, taking into account “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3).
On the evidence and on the balance of probabilities, taking into account the previous decisions discussed and criteria expressed in WIPO Overview 3.0, the Panel finds the disputed domain names to have been both registered and used in bad faith under paragraph 4(a)(iii) 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 names, <hmrc-gateway-gov.online>, <hmrc-tax-gateway.online>, <hm-revenue-tax.online>, <refund-hmrc-gov.online>, and <refund-hmrc.online> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: July 19, 2018