WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Ashley Heart

Case No. D2021-0346

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ashley Heart, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <hmrctaxrefund-application.com> and <hmrctaxrefundapplication.com> 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 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2021.

The Center appointed David Taylor as the sole panelist in this matter on March 16, 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

Formally known as “Her Majesty’s Revenue and Customs”, often shortened to “HM Revenue and Customs”, or “HMRC”, the Complainant is a non-ministerial department of the United Kingdom Government responsible for the collection of taxes, the payment of some forms of state support, and the administration of other regulatory regimes.

The Complainant is the owner of a number of relevant trademark registrations, including United Kingdom Trademark Registration No. 2471470, HMRC, registered on March 28, 2008.

The Complainant also operates a website within the United Kingdom Government’s website at “www.gov.uk/government/organisations/hm-revenue-customs”, which is accessible via the domain name <hmrc.gov.uk>.

The disputed domain name <hmrctaxrefundapplication.com> was registered on December 14, 2020. The disputed domain name <hmrctaxrefund-application.com> was registered on December 19, 2020. Both disputed domain names were registered using a privacy service. The disputed domain names do not resolve to active websites. The disputed domain names have been flagged by Google’s Safe Browsing service as unsafe.

On January 25, 2021, the Complainant sent a notice to the Respondent, by email via the privacy service through which the disputed domain names had been registered, requesting transfer of the disputed domain names. The Respondent did not reply to the Complainant’s notice.

5. Parties’ Contentions

A. Complainant

The Complainant asserts registered as well as unregistered trademark rights in HMRC. The Complainant submits that the disputed domain names are confusingly similar to its HMRC trademark. Noting that the words “tax refund application” are inherently associated with the Complainant and its activities, the Complainant submits that the addition of such terms to the Complainant’s trademark in the disputed domain names does not dispel any possibility of confusion, but rather increases the potential for confusion among Internet users.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that the Respondent is not a licensee of the Complainant, nor has the Respondent received any form of consent to make use of the Complainant’s name or trademarks for any purpose. The Complainant asserts that there is no evidence to support a finding that the Respondent is commonly known by the disputed domain names. The Complainant notes that the disputed domain names have been flagged by Google as being unsafe, and submits that use of the disputed domain names for criminal activity such as phishing or malware distribution could never give rise to any rights or legitimate interests in the disputed domain names on the part of the Respondent. In light of the confusing similarity between the disputed domain names and the Complainant’s name and trademarks, the Complainant submits that the disputed domain names could not be used in any manner without causing widespread confusion.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant observes that the disputed domain names have both been flagged as being unsafe by Google, and submits that any use of the disputed domain names to deceive Internet users cannot be bona fide. Indeed, any such use must be abusive. The Complainant submits that the disputed domain names are being passively held by the Respondent in bad faith. The Complainant asserts that the Respondent’s registration of the disputed domain names using a privacy service, and the Respondent’s failure to reply to the Complainant’s letter dated January 25, 2021, further support a finding of bad faith.

The Complainant requests transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(i) the disputed domain names are identical 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 the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in HMRC for the purposes of paragraph 4(a)(i) of the Policy, the registration details of which are set out in the factual background section above.

The disputed domain names reproduce the Complainant’s HMRC trademark as the leading element of both disputed domain names, followed by the words “tax refund application”. The Panel finds that the addition of such terms, as well as a hyphen in the case of the disputed domain name <hmrctaxrefund-application.com>, do not prevent a finding of confusing similarity with the Complainant’s HMRC trademark, which remains clearly recognizable as the leading element of both disputed domain names; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The generic Top-Level Domain “.com” may be disregarded for the purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s HMRC trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted in WIPO Overview 3.0, section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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.”

Screen captures submitted in evidence by the Complainant indicate that the disputed domain names do not resolve to active websites, and have been flagged as unsafe by Google’s Safe Browsing. There is no evidence of the disputed domain names having been used in connection with any bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.

The Respondent has not come forward with any evidence of being commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy, nor is there any evidence of the Respondent having made any legitimate noncommercial or fair use of the disputed domain names as contemplated by paragraph 4(c)(iii) of the Policy.

The Panel further notes that in light of the composition of the disputed domain names themselves, consisting of the Complainant’s HMRC trademark, together with terms that are inherently associated with the Complainant (“tax refund application”), the disputed domain names carry with them a high risk of implied affiliation with the Complainant. Prior UDRP panels have held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner; see WIPO Overview 3.0, section 2.5.1.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent did not reply to the Complainant’s pre-Complaint correspondence, or to the Complaint. There are no circumstances present that would otherwise support a finding that the Respondent has rights or legitimate interests in the disputed domain names.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It can be reasonably inferred, from the composition of the disputed domain names themselves, which make direct reference to the Complainant’s trademark as well as activities associated with the Complainant, that the Respondent was well aware of the Complainant and its HMRC trademark, and proceeded to register the disputed domain names without any authorization from the Complainant to make use of its HMRC trademark as part of a domain name or otherwise.

Prior UDRP panels have held that the non-use of a domain name would not prevent a finding of bad faith; see WIPO Overview 3.0, section 3.3. The Panel notes that the Complainant’s HMRC trademark is distinctive and is well known in the United Kingdom. The Respondent did not reply to the Complainant’s pre-Complaint correspondence, nor has the Respondent come forward in this proceeding to provide any evidence of actual or contemplated good-faith use of the disputed domain names. The Respondent registered the disputed domain names using a privacy service to conceal its identity. In the circumstances, the Panel cannot conceive of any good-faith use to which the disputed domain names could be put that would not have the effect of misleading consumers. Rather, the Complainant has produced evidence indicating that it is frequently the target of phishing, online scams, and other criminality. In this regard, the Complainant has made reference to a number of factors, which when read together, would tend to support a finding that the disputed domain names are likely to be used for abusive purposes, namely:

(i) registration of the disputed domain names composed of the Complainant’s HMRC trademark together with additional descriptive terms;

(ii) such additional terms are those closely associated with the Complainant and its activities, in this case the disputed domain names, which include the descriptive terms “tax refund application”, may be read as a call to action for tax payers to apply for a tax refund;

(iii) there are no qualifying terms in the disputed domain names that make the non-relationship between the Respondent and the Complainant clear and unambiguous (such as “unofficial”);

(iv) the Respondent has made use of a privacy service when registering the disputed domain names; and

(v) the disputed domain names do not appear to have been used in connection with any active websites.

In light of the above, the Panel accepts the Complainant’s submission that there is a reasonable likelihood that the disputed domain names could be used by the Respondent to engage in phishing campaigns, or other forms of online criminality targeting the United Kingdom public.

The Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <hmrctaxrefund-application.com> and <hmrctaxrefundapplication.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: March 31, 2021