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 / Maxwell Gomez

Case No. D2021-2000

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Maxwell Gomez, Spain.

2. The Domain Name and Registrar

The disputed domain name <hmrctaxdepartment.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 30, 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 July 1, 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 July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on August 10, 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, amongst other things, the collection of taxes. It was created in its present form by The Commissioners for Revenue and Customs Act, 2005, but its predecessor entities were founded as early as 1665. General information about the Complainant and its activities can be found on a website contained within the UK Government’s official portal, which can also be accessed through the domain name <hmrc.gov.uk>.

The Complainant is the proprietor of several relevant UK trademarks (the “Marks”), amongst which the UK trademark registration HMRC, filed on November 5, 2007 and registered on March 28, 2008 for goods and services in classes 9, 16, 35, 36 38, 41 and 45 (registration number UK00002471470) (the “HMRC Trademark”).

The HMRC Trademark pre-dates the registration of the disputed domain name by approximately 14 years.

The Complainant contends that it also enjoys unregistered rights in the initials “HMRC” being very well known in the UK and around the world as “hmrc”, and to illustrate this has provided the Panel with screenshots of various websites.

Furthermore, copies of several articles in third party publications of various dates and locations, which refer to the Complainant, the initials “HMRC”, and other terms by which the Complainant is commonly known, have also been provided to the Panel.

The disputed domain name was registered on February 22, 2021. The disputed domain name resolves to the registration service provider’s default parking page (the “Respondent’s Website”) featuring pay-per-click links to third party websites.

The Complainant provides evidence that the disputed domain name has also Mail eXchanger records configured, which means that it is capable of receiving emails.

On June 15, 2021, the Complainant sent a cease and desist letter to the Respondent, which remained unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Marks in that it only differs by the addition of the words “tax department”, along with the generic Top-Level Domain (“gTLD”), that do not distinguish the disputed domain name from the Marks.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, based on the following findings:

(i) the Respondent, to the best of the Complainant’s knowledge, has never been known by the names “HMRC” or “HMRC tax department”, the Complainant has never granted permission to the Respondent to use its Marks in connection with a domain name, or otherwise and the Respondent does not own any trademarks that incorporate or are similar or identical to the terms “hmrc” or “hmrc tax department”;

(ii) the Respondent’s Website resolves to the registration service provider’s default parking page; and

(iii) the Respondent did not reply to the communication sent by the Complainant’s agent.

The Respondent also contends that the disputed domain name was registered and is being used in bad faith, for the undernoted reasons, which are all indicative of bad faith:

(i) the passive holding of the disputed domain name, given the circumstances of the case (e.g., the fact that the Complainant is very well known in the UK and beyond and that the Marks have been used for many years prior to the registration of the disputed domain name, the fact that the Respondent failed to reply to the Complainant’s letter, the concealment by the Respondent of its details from the public WhoIs and the implausibility of any good faith use to which the domain name may be put, especially so given the inclusion of the term “tax department” which, in this context, could only reasonably relate to the Complainant and its activities);

(ii) the use of a privacy service by the Respondent;

(iii) the disputed domain name is configured with Mail eXchanger records, so that it is possible that the disputed domain name has also been used in relation to email services; and

(iv) while the Respondent admits that he is unable to exhibit direct evidence of fraudulent use, the Complainant contends that the disputed domain name matches several criteria which would indicate that non-legitimate motives behind its registration are more probable than not.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is 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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

First of all, this Panel finds that the Complainant has clearly evidenced that it has trademark rights in HMRC, which predate the registration of the disputed domain name. The Complainant has also provided evidence showing that third parties in the United Kingdom and elsewhere often refer to the Complainant as HMRC.

Secondly, the disputed domain name fully incorporates the Complainant’s HMRC Trademark in which the Complainant has exclusive rights. It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non-distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name.

Thirdly, in the circumstances of the present case, the Panel considers that the mere addition of the words “tax department”, immediately following the Complainant’s HMRC Trademark, are clearly descriptive, and do not prevent a finding of confusing similarity between the Complainants trademark and the disputed domain name.

Fourthly, it is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic gTLD indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” gTLD does not prevent a finding of confusing similarity in the circumstances of the present case see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s HMRC Trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of proof to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Cash Converters Pty Ltd v. John Cox, WIPO Case No. D2013-0721; and The Commissioners for HM Revenue and Customs v. Wei Wang, APIS, WIPO Case No. D2017-1492.

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

(i) there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

(ii) there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use;

(iii) there is no evidence that the Respondent has been commonly known by the disputed domain name;

(iv) despite having received a communication from the Complainant, the Respondent never responded and simply continued his use of the disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the HMRC Trademark at the time the Respondent registered the disputed domain name. The HMRC Trademark is a coined abbreviation with no meaning in the English language. Furthermore, there is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name not only incorporating the HMRC Trademark, but adding the terms “tax department”, both of which specifically refer to the Complainant and the services it offers, unless there was an intention to create a likelihood of confusion between the disputed domain name and the Complainant and its HMRC Trademark.

Moreover, at the time of the filing of the complaint and of this decision, the disputed domain name resolves to the registration service provider’s default parking page featuring pay-per-click links to third party website. The Respondent intentionally attempts to attract, for commercial gain, Internet users to his 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 his web site. This is evidence of bad faith as per paragraph 4(b)(iv) of the Policy.

In the circumstances of the present case, the Panel notes the following factors which constitute indicators of the Respondent’s bad faith:

(i) the Complainant’s HMRC Trademark is widely known in the UK and beyond, as evidenced by the Complainant;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

(iii) the Respondent did not reply to the Complainant’s communication before the proceedings;

(iv) the Respondent has used a privacy service;

(v) the Respondent has Mail eXchanger records attached to the disputed domain name, indicating, in the view of the Panel, that the Respondent at least has considered to use the confusingly similar disputed domain name for email correspondence (Les Parfumeries Fragonard v. Sunny Elemba, WIPO Case No. D2020-1648; Tetra Laval Holdings & Finance S.A. v. Prince Amin, Access Point Technologies, WIPO Case No. D2016-1052); and

(vi) the Respondent did not reply to the Complainant’s contentions.

Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. The Panel finds that the Complainant has fulfilled 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 name <hmrctaxdepartment.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: August 31, 2021