WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Alex Brown, Dirso Websire
Case No. D2019-1438
1. The Parties
Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
Respondent is Alex Brown, Dirso Websire, Uruguay.
2. The Domain Name and Registrar
The disputed domain name <officialhmrc.website> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2019, 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 Complainant on June 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 28, 2019.
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 Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2019.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 16, 2019. 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, formally known as “Her Majesty’s Revenue and Customs”, is a department of the United Kingdom government responsible for the administration and collection of taxes. Since the creation of The Commissioners for Revenue and Customs Act in 2005, Complainant has been identified by its present name and by the initialism “HMRC”. Complainant owns a United Kingdom trademark registration for HMRC, which it obtained on March 28, 2008, registration No. 00002471470. Individuals and businesses within the United Kingdom directly use Complainant’s services to pay taxes and collect certain forms of state support. Over the years, Complainant has received significant attention from consumers and the media worldwide.
Respondent registered the disputed domain name on March 18, 2019. The website associated with the disputed domain name previously featured pay-per-click advertisements relevant to the financial industry. Across the top of the website, Respondent disclaimed any relationship with the advertised companies and stated that the advertisements were automatically generated.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s HMRC mark. In Complainant’s view, the addition of the generic and descriptive word “official” does not distinguish the disputed domain name from Complainant’s mark and makes confusion more likely.
Complainant also asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is using the disputed domain name to display pay-per-click advertisements that capitalize on the value of Complainant’s mark. Complainant contends that Respondent’s use is neither legitimate nor bona fide.
Regarding Respondent’s bad faith, Complainant contends that the display of pay-per-click advertisements on a website with a domain name confusingly similar to Complainant’s mark is evidence of Respondent’s bad faith. Moreover, Respondent’s disclaimer of responsibility does not prevent a finding of bad faith. Because Complainant believes Respondent lacks any legitimate motives for using the disputed domain name, Complainant asserts that it is more likely than not that Respondent is using the disputed domain name to commit fraud.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has established its rights in the HMRC mark by way of its United Kingdom trademark registration. The disputed domain name consists of the HMRC mark and the word “official”. The disputed domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the mark in its entirety. The addition of the word “official” does not dispel the confusing similarity.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. Complainant has not consented to or authorized Respondent’s use of the HMRC mark. Nothing in the factual record suggests that Respondent is commonly known as “HMRC” or “Official HMRC.” Moreover, Respondent’s use of the disputed domain name in connection with pay-per-click advertisements that trade on Complainant’s goodwill or otherwise mislead consumers is not a legitimate or bona fide use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the disputed domain name in bad faith. Respondent does not offer, and the Panel is not aware, of any meaning or significance of the acronym “HMRC” other than a reference to Complainant’s mark. It is therefore fair to find that Respondent must have been aware of Complainant’s rights in the HMRC mark. Moreover, given the addition of the word “official” in the disputed domain name, it is highly implausible that Respondent registered the disputed domain name without knowledge of Complainant’s mark. See F. Hoffmann-La Roche AG v. Shahab Shapourifar, WIPO Case No. D2009-1748 (finding no conceivable good faith use of the domain name <officialxenical.com> given Complainant’s XENICAL trademark). In the absence of a response explaining otherwise, the most probable explanation is that Respondent registered the disputed domain name with the intent to mislead consumers searching for Complainant’s website, in clear violation of the Policy.
The Panel also concludes that Respondent’s use of the disputed domain name to promote financial services provides evidence of bad faith. The fact that the advertisements may have been automatically generated by a third party does not cure Respondent’s bad faith. SeeWIPO Overview 3.0 , section 3.5. Moreover, Respondent could have, but did not, used negative keywords to prevent the generation of advertisements relating to taxes and accounting. See WIPO Overview 3.0, section 3.5 (use of negative keywords mitigates against inference of targetting).
Complainant has satisfied 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 <officialhmrc.website> be transferred to Complainant.
Lawrence K. Nodine
Date: August 30, 2019