WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Product K, Racks Jw, Idrees Khan, Name Redacted, Denz Renz

Case No. D2021-1248

1. The Parties

The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom (“UK”), represented by Demys Limited, UK.

The Respondents are Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Product K, UK; Racks Jw, UK; Idrees Khan, UK; Name Redacted¹; Denz Renz, UK.

2. The Domain Name and Registrar

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 22, 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 April 27, 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 April 28, 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 Respondents of the Complaint, and the proceedings commenced on April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. The Center informed the Parties that it would proceed to Panel appointment on June 2, 2021.

On May 4 and 5, 2021, the Center received emails from a third party who identified as being related to the Name Redacted Respondent (associated with the disputed domain name <hmrc-rebates-pending.com>), claiming that there had been identity theft and that Name Redacted had not registered the said disputed domain name.

The Center appointed Jonathan Agmon as the sole panelist in this matter on June 8, 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 a non-ministerial department of the UK Government responsible for the collection of taxes (including income tax and Value Added Tax), the payment of some forms of state support and the administration of other regulatory regimes. It is established in The Commissioners for Revenue and Customs Act 2005. The Complainant is formally known as “Her Majesty’s Revenue and Customs”; its short form name is “HM Revenue and Customs” or “HMRC”.

As the UK Government’s tax authority, almost every UK individual and business is a direct customer of the Complainant and user of its services. The Complainant operates a website within the UK Government’s official portal which can be accessed through the domain name <hmrc.gov.uk>.

The Complainant is the proprietor of UK Trademark Registration No. 2471470 for HMRC, registered on March 28, 2008.

The disputed domain names were registered on the following dates, respectively:

- <hm-rc-pendingrebate.com> registered on October 25, 2020;
- <hmrcpendingrebateuk.com> registered on November 12, 2020;
- <hmrc-pendings-rebates.com> registered on December 6, 2020;
- <hmrc-rebates-pending.com> registered on November 19, 2020; and
- <hmrcuk-pending-rebate.com> registered on October 24, 2020.

The websites to which the disputed domain names resolve were inactive at the time of the filing of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant points out that apart from its registered trademark rights, it has unregistered rights in relation to the abbreviation “HMRC”. The Complainant states that it is well known in the UK and around the world as “HMRC”.

Additionally, as with other tax authorities, the Complainant and its customers are frequently targeted by phishing and online scams. The common features of these abusive practices and fraudulent use of registered domain names include, inter alia:

(i) the use of domain names made up of the tax authority’s marks and additional generic terms;
(ii) the additional generic terms are those closely associated with the tax authority and its activities (e.g. “tax”, “contact”, “gov”, “form”, “rebate”);
(iii) the use of false or redacted contact details on WhoIs;
(iv) the use of the names and/or addresses of third parties on WhoIs which have been acquired through identity theft; and
(v) inactive websites, the display of pay-per-click advertising or the use of parking pages.

The disputed domain names are confusingly similar to its HMRC mark as they only differ by the addition of the words “pending” / “pendings” and “rebate” / “rebates”. In two of the disputed domain names, the letters “uk” are included. The Complainant’s mark is the most prominent, dominant, and distinctive element of the disputed domain names. Combining the HMRC trademark with the generic terms “rebate”, “pending”, and “uk” does not dispel the possibility of confusion but instead increases the potential for confusion among Internet users. The hyphens in four of the disputed domain names are of no significance and should be ignored.

The Complainant also argues that the Respondents have no rights or legitimate interests in respect of the disputed domain names, they have not been licensed or permitted by the Complainant to use any of its trademarks or register the disputed domain names. Further, there is no evidence that the Respondents are commonly known by the names “hmrc” or any of the combinations of the words “hmrc pending rebate uk” (and their plural or singular variants). The disputed domain names have been flagged as having been used for phishing or other criminal activity. The Respondents cannot have intended to use the disputed domain names for any legitimate or fair use.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith for phishing and criminal purposes by creating a likelihood of confusion with the Complainant’s HMRC mark. The passive holding of the disputed domain names which contain the Complainant’s well-known HMRC trademark constitutes bad faith registration and use. The use of the privacy service is also indicative of bad faith.

B. Respondents

The Respondents did not reply to the Complainant’s contentions. However, on May 4 and 5, 2021, a third party sent email communications to the Center regarding apparent identity theft related to the registration of the disputed domain name <hmrc‑rebates-pending.com>.

6. Discussion and Findings

6.1 Preliminary Issue: Consolidation of Proceedings

The Complainant requested a consolidation of the proceeding in relation to the disputed domain names which are registered in the names of multiple respondents.

On this issue, the Panel finds guidance from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 4.11.2:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Complainant contends that it is more likely than not that the disputed domain names are all under common control. Considerations raised by the Complainant in support of its request include, inter alia, the following:

(a) the disputed domain names were registered with the same Registrar;
(b) the disputed domain names used the same privacy service and name servers;
(c) the disputed domain names were registered within 43 days of each other; and
(d) the disputed domain names are similar in construction in that they all incorporate the Complainant’s HMRC mark and the word “pending” and “rebate” in various forms

The Panel finds that the Complainant has demonstrated by a preponderance of the evidence in this case that a single person has registered the disputed domain names using a variety of fictitious names including the use of identity theft, and that consolidation would be fair and equitable to all Parties. (See Yahoo!, Inc. v. Somsak Sooksripanich and Others, WIPO Case No. D2000‑1461.) The common mix of the terms “hmrc”, “pending(s)” and “rebate(s)” and the other factors enumerated by the Complainant are indicators of common control, which has not been disputed by any of the named Respondents. The evidence in this case supports the inference that the Respondents have a common purpose, to evoke the impression to Internet users that the disputed domain names relate to services or support provided by the Complainant, the HMRC, namely the provision of rebates.

The Respondents are hereafter referred to as “the Respondent”.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides an indication that the rights in the mark belong to its respective owner. The Complainant has registered rights in the trademark HMRC. The Panel finds that the Complainant’s trademark has acquired goodwill and reputation as a result of its continuous and extensive use since at least 2005.

The disputed domain names <hm-rc-pendingrebate.com>, <hmrcpendingrebateuk.com>, <hmrc‑pendings‑rebates.com>, <hmrc-rebates-pending.com> and <hmrcuk-pending-rebate.com> each wholly integrate the Complainant’s HMRC mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The addition in the disputed domain names of the terms “pending”, “pendings”, “rebate”, “rebates” and “uk” and of the hyphens (where they appear) does not prevent a finding of confusing similarity with the Complainant’s trademark. (See WIPO Overview 3.0, sections 1.7 and 1.8.)

Further, it is well established that the addition of the generic Top-Level Domain “.com” is disregarded under the first element confusing similarity test. (See WIPO Overview 3.0, section 1.11.1.)

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns a trademark registration for HMRC long before the disputed domain names were registered. The Complainant is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). There is also no evidence on record showing that the Respondent is commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3).

The disputed domain names appear to be used for the purposes of phishing and perpetrating a fraud. The use of a domain name for illegal activity (e.g. phishing, distributing malware, impersonation or other types of fraud) can never confer rights or legitimate interests on a respondent. (See WIPO Overview 3.0, section 2.13.1.)

Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)).

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its HMRC trademark. Considering the mix of generic terms used in combination with the Complainant’s trademark in the disputed domain names, it is highly unlikely that the Respondent did not know of the Complainant and its HMRC mark prior to registration of the disputed domain names. The disputed domain names incorporate the Complainant’s HMRC trademark in its entirety with additional terms, which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

The disputed domain names, having been flagged as being for phishing and other criminal intent, cannot but be considered to have been registered and used in bad faith. The Complainant also provided evidence that the disputed domain names presently do not resolve to active websites. It is well established that passive holding or non-use of a domain name does not prevent a finding of bad faith (see WIPO Overview 3.0, section 3.3). In this regard, the Panel takes into account (i) the high degree of distinctiveness of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the disputed domain names may be put. In the Panel’s view, having taken the above circumstances into account, such behavior by the Respondent constitutes further evidence of registration and use of the disputed domain names in bad faith.

While the Panel is not in a position to verify the third party’s contention of identity theft, the decision in relation to the disputed domain name <hmrc-rebates-pending.com> would be the same even if the Name Redacted Respondent was in fact the registered owner of this disputed domain name. This is because there are no claims of rights or legitimate interests in the disputed domain name <hmrc-rebates-pending.com> made by the third party or the Name Redacted Respondent, and the above considerations remain unchanged. If, on the other hand, there was indeed identity theft by the Respondent, such conduct is added support for the Panel’s finding that the said disputed domain name was registered and used in bad faith.

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 <hm-rc-pendingrebate.com>, <hmrcpendingrebateuk.com>, <hmrc-pendings-rebates.com>, <hmrc-rebates-pending.com> and <hmrcuk-pending-rebate.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: June 22, 2021

¹ The Respondent-in-fact associated with the disputed domain name <hmrc-rebates-pending.com> appears to have used the name and contact details of a third party in the registration of the domain name. In view of the apparent identity theft, the Panel has redacted from this Decision the name of the individual whose name was fraudulently adopted. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name <hmrc-rebates-pending.com>, which includes the name of the concerned Respondent. The Panel has authorized the Center to transmit Annex 1 to the concerned Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.