WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Domains By Proxy, LLC DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2018-2348
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”), represented by Demys Limited, United Kingdom.
The Respondent is Domains By Proxy, LLC DomainsByProxy.com of Scottsdale, Arizona, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <hmrcrevenuegovuk.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 18, 2018, where it indicated the name of the Respondent disclosed by the Registrar.
The Center verified that the Complaint together with the amended 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 October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 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 government of the United Kingdom responsible for the collection of taxes and duties, and numerous other administrative and governmental functions. In short, the Complainant is the United Kingdom’s tax and customs authority.
The Complainant owns United Kingdom registered trademark No. 2471470 for HMRC in numerous classes; this trademark was filed on November 5, 2007, and registered on March 28, 2008.
Little is known about the Respondent, who appears to be a woman in Panama.
The disputed domain name was created on July 16, 2018 and resolved to a pay-per-click (“PPC”) website.
5. Contentions of the Parties
The Complainant maintains that its identity and the “hmrc” acronym (corresponding to “Her Majesty’s Revenue and Customs”) are very well known both in the United Kingdom and internationally, and submits evidence to this effect. The Complainant further points out that, as a tax authority, it has frequently been targeted by phishing and other online scams, and strongly states that the Respondent’s activities closely fit the known pattern of such abuses.
The Complainant cites numerous cases involving domain names incorporating HMRC where the panels ordered the domain names transferred to the Complainant; the most recent of these is The Commissioners for HM Revenue and Customs v. Thomas E. May, WIPO Case No. D2018-1475, which the Complainant cites as analogous to this case.
The Complainant further asserts that the disputed domain name is clearly and deliberately confusingly similar to its trademark, and that the Respondent does not have any rights or legitimate interests in the disputed domain name. Further the Complainant alleges that the disputed domain name can only have been registered in bad faith and was, inter alia, used to house a “pay per click” site for various services in clear bad faith. The Complainant also maintains that it “cannot conceive of a reasonable legitimate use for the disputed domain name” and that it is likely that it is and was intended for fraud. The Complainant sent a cease and desist letter to the electronic address of the Respondent, but received no reply.
The Complainant’s factual contentions and arguments are further discussed below as necessary.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name begins with and contains the entirety of the Complainant’s registered trademark HRMC, followed, without punctuation, by “revenue”, “gov” and “uk”.
The Complainant’s trademark is clearly recognizable within the disputed domain name. The additional terms “revenue”, “gov” and “uk” do not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Moreover, in this Panel’s view, these additional terms far from dispelling any confusion engendered by the use of the Complainant’s trademark, appear deliberately to increase such confusion. This is because; raising “revenue” is the Complainant’s major role and, moreover, part of its full name; the Complainant is a government agency, and “gov” is an Internet contraction for government; and, finally, the Complainant is in the United Kingdom “uk”, and part of its government.
It follows that the disputed domain name is clearly confusingly similar to the Complainant’s trademark as required to meet the burden of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant makes clear that it has never authorized the Respondent to use its trademarks in the disputed domain name or otherwise, and there is nothing to suggest that the Respondent is known as “hmrc” or “hmrcrevenuegovuk”; nor is there any indication that the Respondent was using, or could use, the disputed domain name in connection with a bona fide offering of goods and services. There is, moreover, no evidence or inference in the case file of this matter that in any way contradicts the Complainant’s clear assertions in this regard.
It can now be said that it is well established in UDRP case law and jurisprudence that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Section 2.1 of WIPO Overview 3.0; accord, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
As the Complainant has here established at least such a prima facie case, and there is nothing in the case file that would rebut or contradict it, the Complainant has met its burden of proof under paragraph 4 (a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name could not have been chosen by serendipity and, as explained above, it appears evident that it was crafted so as deliberately to create confusion with the Complainant and its activity. It is therefore difficult to see how the disputed domain name could have been registered other than in bad faith.
It is similarly difficult to see how the disputed domain name could ever lend itself to any legitimate or good faith use. In fact, the Complainant has documented that the disputed domain name was used to house PPC advertising, which is not here a good faith use. See section 2.9 of WIPO Overview 3.0. The Respondent’s failure to respond to a demand notice or to file a response in this case are further indicia that are consistent with bad faith. It is not necessary to examine the Complainant’s, possibly well-founded, allegations concerning the Respondent’s likely use of the disputed domain name for phishing and similar conduct as the finding of bad faith is clear; there appears no good faith explanation for the Respondent’s conduct.
The Complainant has, accordingly, met its burden 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 name <hmrcrevenuegovuk.com> be transferred to the Complainant.
Date: November 27, 2018