WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Miju Ahmed / Marlin Hepburn / Engine Carley / Peter Gone

Case No. D2021-0345

1. The Parties

The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Canada / Miju Ahmed, United Kingdom / Marlin Hepburn, United Kingdom / Engine Carley, United Kingdom / Peter Gone, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <hmrc-taxrefundform.com>, <hmrc-taxrefundformuk.com>, <hmrc‑uk‑taxrefundform.com>, <hmrc-uktaxrefundform.com>, and <uk-hmrc-taxrefundform.com> each a “Disputed Domain Name” and together the “Disputed Domain Names” are 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 Disputed Domain Names. On February 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2021, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all Disputed Domain Names are under common control; and/or file a separate complaint for any Disputed Domain Name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all Disputed Domain Names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed an amended Complaint on February 9, 2021.

On February 11, 2021, the Center noted that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.

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 Respondents of the Complaint, and the proceedings commenced on February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 4, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on March 17, 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 commonly known as “Her Majesty’s Revenue and Customs”, which is abbreviated to “HM Revenue and Customs” or “HMRC”. It is the United Kingdom (“UK”) Government institution responsible for the collection of taxes, the payment of some forms of state support and the administration of various other functions on behalf of the UK Government.

The Complainant is the proprietor of a trademark registration for the term HMRC (the “HMRC Mark”), namely, United Kingdom registration No. UK00002471470 for HMRC (word mark), registered on March 28, 2008, for goods and services in classes 9, 16, 35, 36, 41, and 45.

The Complainant operates a website for use by taxpayers and other interested parties that is linked to the domain name <hmrc.gov.uk>.

The Disputed Domain Names were registered on the following dates:

<hmrc-taxrefundform.com> – December 20, 2020
<hmrc-taxrefundformuk.com> – January 09, 2021
<hmrc-uktaxrefundform.com> – December 25, 2020
<hmrc-uk-taxrefundform.com> – January 07, 2021
<uk-hmrc-taxrefundform.com> – January 08, 2021

The Disputed Domain Name <hmrc-uktaxrefundform.com> redirects to the website of a UK national newspaper. All the other Disputed Domain Names are inactive.

The record contains a copy of correspondence sent by email by the Complainant to the Respondents regarding the Disputed Domain Names. No reply was received.

5. Parties’ Contentions

A. Complainant

The Complainant has provided detailed and comprehensive submissions and evidence cited various previous UDRP cases. The Panel does not consider it necessary to set out here more than a summary of the case the Complainant makes.

The Complainant makes a number of submissions as to why the Disputed Domain Names are likely under common control and hence why proceeding against multiple respondents is appropriate. These are discussed below.

Under the first element of the Policy, the Complainant states that it owns trademark registrations for HMRC and related marks in the UK, and has common-law rights in these marks through extensive use and publicity dating from the establishment of the government entity under that name in 2005. The HMRC Mark is readily visible in each of the Disputed Domain Names, and the dictionary terms “form” and “refund” and the geographical term “uk” do not diminish the confusing similarity. The Complainant states that it has previously encountered domain names impersonating the Complainant established by parties attempting fraudulent activities, and that the Disputed Domain Names are typical examples of the type of name used for such activity.

Under the second element, the Complainant says that none of the Respondents are known as “HMRC” and the Disputed Domain Names are likely intended for use in phishing, which is a type of activity that can never confer rights nor legitimate interests on a respondent.

Under the third element, the Complainant states that it does not matter that the Disputed Domain Names are not being used (apart from the redirection described above). It says that there is no possible legitimate use to which the Disputed Domain Names could be put. It says the Disputed Domain Names are likely intended for some form of activity intended to deceive Internet users and obtain personal information from them. Such activity is manifestly bad faith.

B. Respondents

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Procedural Matters – Consolidation of Respondents

For applicable principles regarding consolidation against multiple respondents see WIPO Overview of WIPO Panel Views on Selected UDRP Questions(“WIPO Overview 3.0”), section 4.11.2. The Panel agrees with the Complainant that the following factors suggest that common control exists:

The Disputed Domain Names are similar in construction – they all incorporate the Complainant’s HMRC mark and the words “tax”, “refund” “form” in various forms;
The Disputed Domain Names were registered within twenty days of each other;
The Disputed Domain Names were registered with the same registrar of record;
The Disputed Domain Names use the same privacy service.

However a factor which suggests common control may not exist is that each of the Respondents has a different address in a geographically different location in the UK. Courier delivery of the Complaint to the Respondents at these addresses was successful in all but one case (where the address was missing a house number). Sometimes in cases involving fraud, identity theft takes place and it turns out the named respondent is an innocent bystander. There is no evidence to suggest that is the case here – in particular none of the Respondents contacted the Center which is typically what an innocent bystander does having received a complaint he knows nothing about. The Panel notes that the names of most if not all of the Respondents are relatively unusual and not commonly encountered in the UK (for example “Engine Carley” and “Peter Gone”) which suggests that they are fake names.

The Panel also notes that one of the Disputed Domain Names has been used differently by being redirected to a national newspaper site, whilst all the rest are held passively.

The Panel cannot resolve these issues in a conclusive manner. Weighing the evidence as whole up, and noting that none of the Respondents has offered any contrary case, the Panel thinks the factors pointing towards common control (above) are such that it cannot be coincidence that five different individuals independently registered each of the Disputed Domain Names which all clearly target the Complainant in a similar fashion (i.e., in that they use a variation of “tax” and “refund” and “form” and uk”) at about the same time. The Panel concludes it is more likely than not that the individuals are acting in concert which, in the opinion of the Panel, amounts to common control. The Panel considers consolidation would be fair and equitable to all Parties. Accordingly, the Panel accepts the Complainant’s request to consolidate the present proceeding pursuant to the Rules, paragraph 10(e).

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each Disputed Domain Name that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the HMRC trademark. The Panel finds each of the Disputed Domain Names is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of a descriptive term (such as here “refund” or “form”) or a geographical term (“uk”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. In the light of this finding the Panel does not consider it necessary to consider the Complainant’s further argument that it has common law trademark rights in the term “HMRC”.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Names or to use the HMRC trademark. The Complainant has prior rights in the HMRC trademark which precede the Respondents’ acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in the Disputed Domain Names. In any event use for fraudulent or phishing purposes can never confer rights or legitimate interests on the Respondents – see WIPO Overview 3.0, section 2.13. Accordingly the Panel finds the Respondents have no rights nor any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the HMRC trademark, the nature of the Complainant as a tax collecting body, and the nature of each of the Disputed Domain Names lead the Panel to conclude the registration and use were in bad faith.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel agrees with the Complainant that it is difficult to conceive of any legitimate use for any of the Disputed Domain Names. It also agrees with the Complainant that it is more likely than not that each of the Disputed Domain Names was registered with the intention of using it in some form of phishing or other fraudulent activity. See Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614 to similar effect.

Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b) (iv)). In the present case the Panel concludes that the deliberate use of the Complainant’s HMRC trademark as part of each of the Disputed Domain Names, was intended for use in some form of fraudulent activity which would attract taxpayers who may then be misled into providing confidential information. That falls squarely within the type of circumstances to which the Policy refers. See also WIPO Overview 3.0, section 3.1.4 stating that “As noted in section 2.13.1, 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”.

Overall it does not generally matter that the Respondents have not as yet used the Disputed Domain Names (apart from one instance of redirection which the Panel does not consider amounts to substantive use). “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, Westdev Limited v. Private Data, WIPO Case No. D2007-1903, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.

Further the Respondents have been given an opportunity to provide any legitimate explanation they may have to explain why there is no bad faith. The Panel takes note of prior cases that have considered that in appropriate cases the burden of production on this element may shift to the Respondents. See e.g., Pixers Ltd. v. Whois Privacy Corp. WIPO Case No. D2015-1171 (holding that “[i]n short, paragraph 4(b)(iv) provides an evidentiary presumption of bad faith registration where there is evidence of a certain kind of bad faith use.”) , and its progeny. The Panel finds that the Respondents have failed to produce any evidence to establish a good faith use of the Disputed Domain Names.

Accordingly, the Panel finds that the Disputed Domain Names have each been registered and are being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

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 Names, <hmrc-taxrefundform.com>, <hmrc-taxrefundformuk.com>, <hmrc-uk-taxrefundform.com>, <hmrc-uktaxrefundform.com>, and <uk-hmrc-taxrefundform.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: April 1, 2021