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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. Domain Administrator, China Capital

Case No. D2018-1640

1. The Parties

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

The Respondent is Domain Administrator, China Capital of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <hmrc-claim-refund.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2018. On July 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 for the registrant and contact information for the disputed domain name.

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 July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2018.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 22, 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 non-ministerial department of the UK Government responsible for the collection of taxes, the payment of some types of state support and the management of other regulatory regimes. It is the owner of the following trademark registration (Annex 6 to the Complaint):

- UK Trademark registration No. 2471470 for the word mark HMRC, in classes 9, 16, 25, 26, 36, 38, 41, 42 and 45, filed on November 5, 2007 and registered on March 28, 2008.

The disputed domain name <hmrc-claim-refund.com> was registered on February 14, 2018. While the disputed domain name does not resolve to an active website, it has been used in the past to redirect Internet users to pay-per-click advertising relating to the Complainant or the Complainant's area of activity.

5. Parties' Contentions

A. Complainant

The Complainant asserts to be the ultimate successor of the Board of Taxes, founded in 1665 under Charles II, renamed the Board of Inland Revenue under the Inland Revenue Act of 1849, and later merged with the HM Customs and Excise in April 2005.

The Complainant also notes that it is accountable for safeguarding the flow of money to the Exchequer through its collection, compliance and enforcement activities, operating a website under the ".gov.uk" portal which can also be accessed by the <hmrc.gov.uk> domain name.

Moreover, the Complainant indicates that it has been frequently targeted by phishing and online scams, as illustrated by several articles in the media (Bundle A to the Complaint) and at least 11 previous UDRP cases relating to domain names which incorporated its HMRC mark and other generic terms.

Under the Complainant's view, the disputed domain name incorporates the entirety of its mark with the addition of the words "claim" and "refund" which are an important element of the Complainant's activities and are thus unable to distinguish the disputed domain name from the Complainant's mark.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) there is no evidence that the Respondent has been commonly known by the disputed domain name, nor is it a licensee of the Complainant or has it received any consent, permission or acquiescence from the Complainant to use its mark or name in association with the disputed domain name or, indeed, any domain name, service or product;

(ii) there is no evidence that the Respondent owns any trademarks that incorporate or are similar or identical to "hrmc" or "hrmc-claim-refund";

(iii) the disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, having it always resolved to pay-per-click advertising;

(iv) given that the disputed domain name is inherently confusingly similar to the Complainant's registered trademark and name it is impossible to conceive any use which would not cause widespread confusion, being it highly unlikely that the Respondent intended to use the disputed domain name for any legitimate or fair use;

(v) the pay-per-click advertising links displayed in the webpage that resolved from the disputed domain name capitalize on the value of the Complainant's mark and do not and cannot confer any legitimate interest on the Respondent.

The Complainant contends, as to the bad faith in the registration and use of the disputed domain name arise from the fact that the disputed domain name has been used by the Respondent in connection with pay-per-click advertising capitalizing on the Complainant's mark. Furthermore, while the Complainant is unable to exhibit direct evidence of fraudulent use, the Complainant submits that the disputed domain name features characteristics typical of domain names that are being used for phishing emails or other fraudulent use, being it reasonable to infer, in the absence to the contrary, that it is more likely than not that fraud or other illegitimate use was the purpose for which the disputed domain name was registered, being a legitimate use for the disputed domain name inconceivable.

Furthermore, the Complainant indicates that the Respondent has been also named respondent in at least 6 other past UDRP decisions in which the panels have all found that the Respondent had no rights or legitimate interests in any of the disputed domain names which related to other well-known third parties' trademarks and which were found to have been registered and used in bad faith. In addition to that, the Complainant also attempted to contact the Respondent unsuccessfully prior to initiating this procedure (Annex 4 to the Complaint), what further indicates that the disputed domain name was registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the HMRC mark duly registered in the UK.

The disputed domain name reproduces in its entirety the Complainant's trademark with the addition of the generic terms "claim" and "refund" which relate to the Complainant's activities and are thus unable to prevent a finding of confusing similarity between distinguish the disputed domain name and the Complainant's mark.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent's rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant's side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that the Respondent is not a licensee of the Complainant or has it received any consent, permission or acquiescence from the Complainant to use the HMRC mark or name in association with the disputed domain name or, indeed, any domain name, service or product.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.

According to the print-outs attached to the Complaint the disputed domain name has been used to redirect Internet to pay-per-click advertisements targeting the Complainant's activities.

The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Respondent's knowledge of the Complainant appears to be evident from the choice of the disputed domain name where the terms "claim" and "refund" which relate to the Complainant's activities are added to the HMRC trademark, being it inconceivable to find any bona fide use of the disputed domain name by the Respondent.

Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstances which could demonstrate its good faith in the registration or use of the disputed domain name.

Lastly, five other circumstances of this case further support the Panel's finding of bad faith:

(i) the Complainant's trademark is well known;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; and

(iii) the Respondent appears to have engaged in a pattern of bad faith conduct, having registered several other domain names that relate to well-known trademarks;

(iv) the Respondent appears to have provided a false or inexistent address; and

(v) the Respondent did not reply to the Complainant's cease-and-desist letter sent prior to the filing of this procedure.

The Panel finds that the Respondent has registered and is using the disputed domain name 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 <hmrc-claim-refund.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 4, 2018

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