WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Adam Smith
Case No. D2020-2524
1. The Parties
The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom (“UK”), represented by Demys Limited, UK.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Adam Smith, UK.
2. The Domain Name and Registrar
The disputed domain name <hmrc-uk.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On September 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 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 October 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 October 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 October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 5, 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 UK Government, responsible for the collection of taxes, the payment of certain state support and the administration of other regulatory regimes.
The Complainant is the proprietor of UK trademark number 2471470 for the word mark HMRC, registered on November 5, 2007 in International Classes 9, 16, 35, 36, 38, 41 and 45.
The disputed domain name was registered on August 22, 2020.
According to evidence submitted by the Complainant, the disputed domain name has resolved to a website at “www.hmrc-uk.com”, which purported to be an official website operated by the UK Government and the Complainant, enabling Internet users to claim a tax refund.
5. Parties’ Contentions
The Complainant states that it has exercised its tax-raising authority in the UK for centuries and that it has been known by its present name since 2005. It provides details of its comprehensive tax-related responsibilities in the UK and states that, as a result of these activities, virtually every UK individual and business are its direct customers. The Complainant states that it is widely known in the UK and throughout the world by the initials HMRC and provides press articles and social media content in support of that contention. The Complainant further states that its principal website can be accessed via the domain name <hmrc.gov.uk>.
The Complainant refers to its registered trademark referred to above and submits that the disputed domain name is confusingly similar to that mark. It contends in particular that the disputed domain name differs from its trademark HMRC only by the addition of the term “uk” which is presumably meant to designate the UK. The Complainant submits that the addition of this term does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark and merely increases the likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It submits that is has never permitted the Respondent to use its HMRC trademark, that the Respondent has not commonly been known by that name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It provides screenshots of the Respondent’s website, which refers to the Complainant and invites Internet users to input their own personal and financial details. The Complainant states that the Respondent’s website has been flagged (by e.g.,Microsoft Defender) as an unsafe, phishing website. The Complainant contends in the circumstances that the Respondent has used the disputed domain name to deceive Internet users and to take advantage of the Complainant’s reputation for potentially criminal purposes.
The Complainant seeks the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established to the satisfaction of the Panel that it has longstanding registered trademark rights in the term HMRC, and that the name and mark HMRC is extensively recognized throughout the UK and elsewhere as designating the Complainant and its governmental role. The disputed domain name wholly incorporates the Complainant’s mark together with the term “uk”, which the Panel does not find prevents the Complainant’s trademark from being recognisable within the disputed domain name. The Panel therefore finds that that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, 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
Based on the evidence submitted by the Complainant, which the Respondent has not disputed, the Panel finds that the Respondent both registered and has used the disputed domain name with the intention of misleading Internet users and taking unfair advantage of the Complainant’s HMRC trademark. The Panel finds the disputed domain name itself to be inherently misleading, as inevitably suggesting that it is owned by or otherwise legitimately connected with the Complainant. The Panel finds furthermore that the Respondent has used the disputed domain name for the purposes of a website which uses the Complainant’s name and mimics an official UK Government website and is clearly intended to mislead Internet users into believing it is an official website of the Complainant’s. The website requests credit card details and the Panel infers that the Respondent has operated this website with the object of financial gain, whether as a phishing scam as alleged by the Complainant or otherwise. The Panel therefore finds that, by using the disputed domain name, the Respondent has sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark (paragraph 4(b)(iv) of the Policy).
The Panel also notes in passing that the Respondent has provided what are obviously false and/or incomplete registration details to the Registrar. In the view of the Panel, such conduct underlines the Respondent’s bad faith intent with regard to the disputed domain name.
The Panel finds in the circumstances that the disputed domain name has been registered and is being used 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-uk.com>, be transferred to the Complainant.
Steven A. Maier
Date: November 17, 2020