WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Commissioners for HM Revenue and Customs v. Gogel David and Robert Morrison
Case No. D2017-0520
1. The Parties
The Complainant is The Commissioners for HM Revenue and Customs of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Demys Limited, United Kingdom.
The Respondents are Gogel David and Robert Morrison, Berlin, Germany.
2. The Domain Names and Registrar
The disputed domain names <hmrc-tax-gov-refund.online >, <hmrc-tax-refund-gov.online>, <hmrc-tax-refund-gov.website> are registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2017. On March 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 14, 2017, 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 March 29, 2017 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 March 30, 2017. The Complainant filed a further amended Complaint on April 5, 2017, to address an administrative formality.
The Center verified that the Complaint together with the amended Complaints 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 April 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on May 3, 2017. 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 United Kingdom ("UK") government, responsible among other duties for collecting taxes, payment of some forms of state support, and administration of various regulatory regimes. The Complainant asserts registered rights in the HMRC mark. The Complainant is the owner of a United Kingdom registration for the HMRC mark (registration number UK00002471470), applied for on November 5, 2007, and registered on March 28, 2008.
The Complainant maintains an official website under the UK Government's <gov.uk> portal accessible at "www.gov.uk/government/organisations/hm-revenue-customs". The Complainant also uses the domain name <hmrc.gov.uk> with its website. The Complainant's HMRC mark is well known: Virtually all UK individuals and businesses have dealings with the Complainant.
The disputed domain names were registered by the Respondents during a one week period between September 7 and September 13, 2016. The disputed domain names <hmrc-tax-refund-gov.online> and <hmrc-tax-refund-gov.website> were registered on September 7, 2016, in the name of the Respondent Robert Morrison. The disputed domain name <hmrc-tax-gov-refund.online> was registered on September 13, 2016, in the name of the Respondent Gogel David. There is no indication of any use of the disputed domain names with active websites.
At the time the Center contacted the Registrar seeking registrar verification on March 14, 2017, the Registrar's published WhoIs records reflected that WhoisGuard Protected, WhoisGuard Inc. ("WhoisGuard") was the registrant of the disputed domain names. WhoisGuard provides privacy protection services. When the Registrar responded to the Center on March 14, 2017, the Registrar stated that WhoisGuard was no longer providing services to the disputed domain names. The Registrar subsequently disclosed the underlying registrants of the disputed domain names as identified above. The contact information provided to the Registrar by each of the Respondents contains the same street address in Berlin, Germany.1
5. Parties' Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant's HMRC mark. The Complainant observes that each of the disputed domain names incorporates the Complainant's HMRC mark in its entirety, differing only by the addition of the hyphenated term "-tax-refunds-gov" in the disputed domain names <hmrc-tax-refund-gov.online> and <hmrc-tax-refund-gov.website>, and the hyphenated term "-tax-gov-refund" in the disputed domain name <hmrc-tax-gov-refund.online> (when disregarding the generic Top-Level Domain ("gTLD")). The Complainant asserts that these terms are entirely generic and descriptive, and "inextricably linked" with the Complainant, since the administration of tax refunds is one of the Complainant's key roles. The Complainant maintains that it is very well known in the United Kingdom and beyond by the HMRC name and mark. The Complainant submits that the results of a search for the term "hmrc" on the search engine "www.google.uk" all relate to the Complainant.
The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant maintains there is no evidence that the Respondents have been commonly known by the disputed domain names, that the Respondents have not been licensed to use the Complainant's HMRC mark, and that the Complainant has not consented to or acquiesced in the Respondents' unauthorized use of the Complainant's mark. The Complainant submits that the Respondents have not used the disputed domain names in connection with any legitimate noncommercial or fair use. To the contrary, the Complainant asserts that the Respondents are attempting to pass themselves off as a government entity, which the Complainant argues is strongly inferred by the inclusion of the term "gov" in the disputed domain names.
The Complainant further submits that the Respondents have passively held the disputed domain names. According to the Complainant, the Respondents cannot obtain or derive any rights of legitimate interests through the passive holding of the dispute domain names. Further, given the Respondents' passive holding of the disputed domain names, the Complainant asserts that the Respondents have not used or made demonstrable preparations to use the dispute domain names in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondents' passive holding of the disputed domain names constitutes registration and use of the disputed domain names in bad faith, relying on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("Telstra"). The Complainant asserts that the circumstances in the present dispute are similar to those inTelstra, as the Complainant is very well known in the UK and beyond; the disputed domain names relate exclusively to the Complainant and its HMRC mark; and the gTLDs do not distinguish the disputed domain names from the Complainant and its HMRC mark.
In view of the foregoing, the Complainant submits it is inconceivable that the Respondents could have registered the disputed domain names without having the Complainant's HMRC mark in mind. The Complainant maintains there is no legitimate reason why the Respondents would register multiple domain names appropriating the Complainant's mark. The Complainant asserts based on the evidence of record that the Respondents are attempting to pass themselves off as a government entity.
The Complainant further asserts that the Respondents more likely than not registered the disputed domain names for phishing or other fraudulent uses. While the Complainant acknowledges having no direct evidence of the Respondents' fraudulent use of the disputed domain names, the Complainant explains that it and its customers are frequently targeted by phishing and other online scams, and that the disputed domain names feature characteristics typical of domain names that have been used in furtherance of such fraudulent schemes.
B. Respondent
The Respondents did not reply to the Complainant's contentions.
6. Preliminary Issue: Respondent Identity
Complaints involving multiple domain names with more than one nominal respondent are subject to consolidation in circumstances where the domain names or the websites to which they resolve are subject to common control and consolidation would be equitable and procedurally efficient. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.16 and decisions cited therein. According to the relevant WhoIs records: (1) the disputed domain names are registered with the same Registrar; (2) the disputed domain names were registered in a one week period between September 7, 2016 and September 13, 2016; (3) the Respondents share a common street address in Berlin, Germany; (4) the disputed domain names are comprised of the terms "hmrc", "tax", "refund", and "gov"; and (5) the disputed domain names has been passively held since their registrations. Based on the uncontroverted facts and circumstances as reflected in the record, and absent any reply from the Respondents, the Panel concludes that the disputed domain names are subject to common control, and that it is both equitable and procedurally efficient to allow the Complainant to proceed against the Respondents in a single consolidated complaint.
7. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. 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 production 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.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant's HMRC mark, in which the Complainant has established rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. See WIPO Overview 2.0, paragraph 1.2. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, each the disputed domain names is confusingly similar to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant's HMRC mark is clearly recognizable in each of the disputed domain names, and the addition of the hyphenated terms "-tax-refund-gov" and "-tax-gov-refund" does not serve to dispel confusing similarity.
Although the gTLD may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374. In any event, the gTLDs selected by the Respondents –".online" and ".website" – do not distinguish the disputed domain names from the Complainant's mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondents, without the Complainant's authorization or consent, has registered multiple domain names that are confusingly similar to the Complainant's HMRC mark, which the Respondents have passively held since registering the disputed domain names some eight months earlier.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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 it 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.
The Respondents have not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents' registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.
It is evident from the record that the Respondents were aware of the Complainant and had the Complainant's HMRC mark in mind when registering the disputed domain names. There is no indication in the record of the Respondents' use or demonstrable preparations to use any of the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. There is no indication that the Respondents are making or have made any legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy, or that the Respondents have been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. As noted above, it is undisputed that the Respondents have not been authorized to use the Complainant's mark.
Accordingly, 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
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents' conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondents' primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, by creating a likelihood of confusion with the Complainant's HMRC mark with the intent to profit therefrom.
The Respondents' passive holding of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, "the relevant issues is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. . . . it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances, among others, to be indicative of the Respondents' bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant's HMRC mark is well known in the UK and elsewhere, and the Respondents beyond question were aware of the Complainant and the Complainant's rights in the HMRC mark when registering the disputed domain names. There is no evidence of any actual good faith use of the disputed domain names by the Respondents, nor evidence of any demonstrable preparations to make a good faith use of the disputed domain names. Indeed, based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain names could be put by the Respondents.2
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. 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-tax-gov-refund.online>, <hmrc-tax-refund-gov.online>, and <hmrc-tax-refund-gov.website> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: May 10, 2017
1 The Complainant's amended Complaints do not carry forward WhoisGuard as a party.
2 The Panel notes that the Complainant has gone to considerable effort to document the frequency with which the Complainant and its customers are targeted by phishing and online scams, as well the Complainant's ongoing activities in combating phishing and other tax-related fraud. While the Complainant identifies the disputed domain names as having characteristics typical of domain names that have been used in furtherance of fraudulent schemes targeting the Complainant or its customers, there is no evidence in the record of this case that the disputed domain names have been used in such a manner. See The Commissioners for HM Revenue and Customs v. Dani Gan, WIPO Case No. D2017-0357.