WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Sha Besn
Case No. D2021-0342
1. The Parties
The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited (a Com Laude Group company), United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Sha Besn, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <hmrc-tax-return-online.com> (“the Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2021. On February 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2021 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 February 5, 2021.
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 February 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2021.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 11, 2021. 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 the owner of the trade mark HMRC, registered, inter alia, in the United Kingdom under trade mark no. 2471470 for tax collecting services since 2008.
The Domain Name registered on January 22, 2021 has been flagged as a security risk for phishing and/or malware.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is responsible for the administration and collection of direct taxes within the United Kingdom and is the owner of the trade mark HMRC, registered, inter alia, in the United Kingdom for tax collecting services since 2008.
The Domain Name registered in 2021 is confusingly similar to the Complainant’s HMRC mark, wholly incorporating it and adding only the dictionary words “tax return online”, three hyphens, and the generic
Top-Level Domain (“gTLD”) “.com”, none of which prevent confusing similarity between the Domain Name and the Complainant’s mark.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and is not authorised by the Complainant.
The Domain Name does not resolve to an active site, but is designed to deceive and has been flagged as a security risk for phishing and/or malware.
The Domain Name has been registered and used in bad faith for suspected phishing purposes. This is especially likely given the inclusion of the terms “tax return online” which, in this context, could only reasonably relate to the Complainant and its activities when incorporated into a domain name that also includes the Complainant’s well-known name and mark.
The Respondent has used a privacy service for registration of the Domain Name and has not responded to the Complainant’s cease and desist letter, which are both also indications of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s HMRC mark (which is registered, inter alia, in the United Kingdom for tax collecting services since 2008), three hyphens, the dictionary words “tax”, “return” and “online”, and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds punctuation, dictionary words and a gTLD to a Complainant’s mark. The Panel agrees that the addition of three hyphens, the dictionary words “tax”, “return” and “online”, and the gTLD “.com” to the Complainant’s mark does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s HMRC trade mark pursuant to the Policy.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s HMRC registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its HMRC trade mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name.
The Domain Name does not resolve to an active web site but has been flagged as a security risk for phishing and/or malware and seems inherently designed to deceive and suggests on its face that it is connected with filing tax returns online and, thereby the Complainant, being the official tax collection entity in the United Kingdom responsible for receiving tax returns. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use.
As such, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The Respondent has not answered this Complaint or the Complainant’s cease and desist letter or given any reason why it should be entitled to register a domain name containing the Complainant’s mark which is well known for tax collection services. The Respondent has used a privacy service to hide its identity.
The inclusion of the words “tax return online” in the Domain Name itself indicates that the Respondent is aware of the Complainant and its services. The Domain Name is inherently deceptive and intended to be so, as Internet users are likely on its face to assume it is a domain name associated with the Complainant.
The Domain Name has been flagged as a security risk for phishing and/or malware, which are both indications of bad faith registration and use. The fact that the Domain Name does not resolve to an active website does not prevent a finding of bad faith.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and 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 Domain Name <hmrc-tax-return-online.com> be transferred to the Complainant.
Date: March 18, 2021