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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. Withheld for Privacy ehf / Zee Hus

Case No. D2021-1678

1. The Parties

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

The Respondent is Withheld for Privacy ehf, Iceland / Zee Hus, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <hmrc-pending-rebates.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 May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 29, 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 June 3, 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 June 7, 2021.

The Center verified that the Complaint 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 June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2021.

The Center appointed Ian Lowe as the sole panelist in this matter on July 21, 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 department of the United Kingdom (“UK”) Government responsible for the collection of taxes, the payment of some forms of state support, and the administration of other regulatory regimes. The Complainant can trace its predecessors as far back as at least 1665, but it was created in its present form by the merger of the Inland Revenue and HM Customs and Excise in April 2005. As the UK Government’s tax authority, almost all UK individuals and businesses are a direct customer of the Complainant and use its services.

The Complainant is commonly known and referred to by the initialism “HMRC”. It operates many websites in the <gov.uk> domain. A number of these incorporate “hmrc” in the URL. As a result, the Complainant is well-known as “HMRC” both throughout the UK and elsewhere.

The Complainant is the registered proprietor of UK trademark number 2471470 HMRC, registered on March 28, 2008.

The Domain Name was registered on November 2, 2020. It resolves to a parking page operated by the Registrar comprising links to other webpages featuring pay-per-click links to third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its HMRC trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

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

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

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

A. Identical or Confusingly Similar

The Complainant has uncontested rights in its HMRC trademark, both by virtue of its trademark registration and as a result of HMRC having become a distinctive identifier associated by consumers with the Complainant and its services through its widespread use of the mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Complainant’s HMRC trademark together with the words “pending” and “rebates”. In the view of the Panel, the addition of these words does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Domain Name is not being used for an active website but merely resolves to a parking page operated by the Registrar. In the Panel’s view, the registration of a domain name conjoining the words “hmrc”, “pending” and “rebates” could not conceivably be used by the Respondent for any legitimate purpose and there could be no possible justification for the Respondent having registered the Domain Name. It could only have been registered to deceive Internet users into believing that it had been registered by or operated on behalf of the Complainant and for unlawful purposes, whether associated with phishing or other fraudulent activities.

The Respondent has chosen not to respond to the Complaint to explain its registration or use of the Domain Name, or to take any other steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the nature of the Domain Name, there is no doubt that the Respondent had the Complainant and its rights in the HMRC mark in mind when it registered the Domain Name. As set out above, the only possible inference is that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the mark and to confuse Internet users into believing that the Domain Name was being operated by or authorized by the Complainant.

The use of the confusingly similar Domain Name to display pay-per-click links related to the Complainant’s area of business further indicates an intent to unduly profit through creating a likelihood of confusion with the Complainant’s HMRC mark within the meaning of paragraph 4(b)(iv) of the Policy.

To the extent that the Respondent’s use of the Domain Name may be said to amount to non-use, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) points out at section 3.3 that panelists have consistently found that this does not prevent a finding of bad faith. Factors that panelists take into account, whilst looking at all the circumstances, include “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

The Complainant’s HMRC mark is distinctive and well-known; there has been no response to the Complaint; the Respondent registered the Domain Name using the privacy service Witheld for Privacy ehf; and there is no good faith use to which the Domain Name could be put.

Accordingly, the Panel finds that the Domain Name has been registered and is being 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 Domain Name <hmrc-pending-rebates.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: August 4, 2021

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