WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Calvin Bonsu
Case No. D2020-1075
1. The Parties
The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Calvin Bonsu, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <hmrc-refund-covid19.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2020, 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 May 1, 2020, 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 May 1, 2020.
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 May 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020.
The Center appointed Gareth Dickson as the sole panelist in this matter on June 3, 2020. 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. It is formally known as “Her Majesty’s Revenue and Customs”, which is often shortened to “HM Revenue and Customs” or the initialism “HMRC”. The Respondent appears from the WhoIs to be located within the United Kingdom.
The Complainant operates a website within the United Kingdom Government’s official portal which can be accessed via the domain name <hmrc.gov.uk>.
The Complainant is the proprietor of a number of registered trade marks, including at least one for HMRC (the “Mark”): United Kingdom trade mark registration number 2471470, filed on November 05, 2007 and registered on March 28, 2008. That registration protects the Mark in classes 9, 16, 35, 36, 38, 41, and 45.
The disputed domain name was registered on March 25, 2020. Microsoft has flagged that the website to which the disputed domain name directed Internet users is associated with malware distribution, while Google also reports that it “contains harmful content”, including pages that “try to trick visitors into sharing personal info or downloading software”.
5. Parties’ Contentions
The Complainant notes that it has successfully asserted its rights in the Mark in previous cases under the UDRP. It also notes that, as with other tax authorities around the globe, it and its customers are frequently targeted by phishing and other online scams. The Complainant states that these scams commonly adopt the name of the Complainant together with terms associated closely with the Complainant’s activities, such as “tax”, “contact”, “gov”, “advice”, “refund”, “rebate”, or “demand”, amongst others.
The Complainant contends that the disputed domain name is confusingly similar to the Mark in that it only differs by the addition of the terms “refund”, which refers to an important part of the Complainant’s activities, and “covid19”, which is a topical reference to the pandemic which has caused governments around the world to consider and adopt a variety of fiscal and other measures to both protect and stimulate their countries’ economies.
The Complainant also submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. In particular, it states that there is no evidence that the Respondent is known by the disputed domain name or any part of it and that the Respondent has no licence, permission, consent or acquiescence from the Complainant to use the Mark in the disputed domain name.
The Complainant notes that Microsoft and Google report that the disputed domain name has been associated with the distribution of malware, even though it now appears to be passively held, and therefore is not being used in connection with any legitimate noncommercial or fair use.
The Complainant asserts that the use of a domain name to distribute malware constitutes a use of the disputed domain name in bad faith, as does its passive holding by the Respondent, under the criteria discussed in section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,(“WIPO Overview 3.0”). It argues that the totality of the evidence demonstrates that the disputed domain name was registered in order to be put to this bad faith use and therefore was registered in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.8 of the WIPO Overview 3.0 provides that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of “refund” and “covid19” in the disputed domain name does not prevent a finding of confusing similarity under the first element.
The disputed domain name is clearly intended to appear, and is, confusingly similar to the Mark. The addition of the generic Top-Level Domain “.com” does not alter this conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
Furthermore, the redirection of Internet users to a website seemingly designed to trick them into giving up information or downloading malware cannot constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” Such consideration applies here.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark. The inclusion of the terms “refund” and “covid19” appears to be designed to mislead Internet users into believing that not only does the disputed domain name come from the Complainant, but that it relates to a fiscal policy aimed at mitigating the impact of the disease caused by the SARS-CoV-2 virus, thereby cynically targeting Internet users who may already feel vulnerable and be desperately searching for some good news amidst the suffering and disruption.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew and sought to acquire for itself the benefit of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Mark.
The Panel also notes the evidence before it that the Respondent has used the disputed domain name to distribute malware and/or to trick Internet users into divulging information. The Respondent has not sought to explain their registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Furthermore, section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The evidence before the Panel is that disputed domain name directs Internet users to a website that appears to be associated with malware and the unauthorised collection of information. These too are examples of per se illegitimate activity and therefore of bad faith. See also, section 3.4 of the WIPO Overview 3.0.
Although the disputed domain name appears no longer to be distributing malware, the Panel finds that the disputed domain name is still being used in bad faith under the doctrine of passive holding. Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding include:
“(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 […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is distinctive of the Complainant and further notes that the Respondent has not participated in these proceedings or sought to explain their registration and use of the disputed domain name, and has sought to conceal its identity through a privacy service. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name 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 disputed domain name <hmrc-refund-covid19.com> be transferred to the Complainant.
Date: June 17, 2020