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 Respondent is Name Redacted.1
The disputed domain name <taxreturn-hmrc.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com, and the disputed domain name <taxreturnhmrc.com> is registered with Domain.com, LLC (the “Registrars”). The two disputed domain names are referred to together in this Decision as the “Disputed Domain Names”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017. On July 11, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On July 11, 2017, and July 12, 2017, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. On July 20, 2017, the Center received an email communication from an individual who indicated that the Disputed Domain Names had been registered using its contact details without its consent. The Center emailed the Parties on July 21, 2017, notifying them of the Respondent identity issue. A response was filed by this individual with the Center on July 22, 2017. A further email was received from this individual on August 17, 2017.
The Center appointed Michael D. Cover as the sole panelist in this matter on August 14, 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.
The Complainant is a non-ministerial 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 is accountable for safeguarding the flow of money to the UK Exchequer through its collection, compliance and enforcement activities and, through these activities, it ensures that money is available to fund the UK’s public services. The Complainant facilitates legitimate international trade, protects the UK’s fiscal, economic, social and physical security before and at the border and collects UK trade statistics. Additionally, the Complainant administers statutory payments within the UK, such as statutory sick pay and statutory maternity pay, and it helps families and individuals with targeted financial support through the payment of tax credits.
The Complainant operates a website with the United Kingdom Government’s “gov.uk” suffix at “https://www.gov.uk/government/organisations/hm-revenue-customs” (Annex 04 to the Complaint - indicative screenshots). This website can also be accessed through the domain name <hmrc.gov.uk>.
The Complainant is the proprietor of UK registered trademark No. 2,471,470 HMRC, registered in a number of Classes and which was filed on November 5, 2007. An extract from the UK Intellectual Property Office Database is at Annex 08 to the Complaint. The Complainant has been known as HMRC since April 2005.
The Respondent’s name has been redacted in these proceedings and it has noted that it did not register the Disputed Domain Names.
The Disputed Domain Name <taxreturn-hmrc.com> does not resolve to any website. The Disputed Domain Name <taxreturnhmrc.com> resolves to pay-per-click advertising, which features advertising links made up of terms such as “HMRC Self Assessment Forms”.
The Disputed Domain Names were both registered on June 2, 2016.
The Complainant submits that its HMRC trademark is very well known in the UK and beyond. The Complainant notes that it has many followers on both Facebook and Twitter and exhibits to the Complaint various search engine results and articles from third-party publications to demonstrate this.
The Complainant submits that the Disputed Domain Names are identical or confusingly similar to the Complainant’s HMRC trademark. The Complainant notes that the only difference between the Disputed Domain Names and the Complainant’s HMRC trademark is the addition of letters in the phrase “taxreturn” and, in relation to one of the Disputed Domain Names, in addition, a hyphen. The Complainant submits that these changes and additions are insufficient to distinguish the Disputed Domain Names from the Complainant’s HMRC trademark. The Complainant notes that the phrase “taxreturn” is descriptive and does nothing to distinguish the Disputed Domain Names from the Complainant’s trademark HMRC. The Complainant notes that the addition of the generic Top-Level Domain (“gTLD”) suffix ”.com” is required for technical reasons and can be ignored for the purpose of comparison of the Disputed Domain Names with the Complainant’s trademark HMRC.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. In particular, the Respondent has not at any time been commonly known by the Disputed Domain Names, has not used or made demonstrable preparations to use the Disputed Domain Names and is not making a legitimate noncommercial of fair use of the Disputed Domain Names. The Complainant also notes that the Complainant has not permitted or licensed the Respondent to use the HMRC trademark and that the Respondent is not otherwise authorized to act on the Complainant’s behalf.
The Complainant notes that the website associated with the Disputed Domain Name <taxreturn-hmrc.com> is inactive and draws the Panel’s attention to Microsoft Corporation v. Charilaos Chrisochoou, WIPO Case No. D2004-0186, in which the Panel held that the passive holding of domain names has not been deemed sufficient to establish legitimate rights or bona fide use of a domain name.
With regard to the Disputed Domain Name <taxreturnhmrc.com>, the Complainant notes that this resolves to a website that displays pay-per-click advertising and that this does not constitute a bona fide offering where the links compete with or capitalize on the reputation of the Complainant’s trademark.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant submits that the Disputed Domain Names have been registered and are being used in bad faith. The Complainant notes that the examples of bad faith in the Policy are non-exhaustive and submits that, while the Disputed Domain Names are either passively held or resolve to pay-per-click advertising, it is possible that the Disputed Domain Names have also been used in relation to email and other Internet services.
The Complainant also submits that it cannot conceive of a reasonable legitimate use for the Disputed Domain Names and that all the factors surrounding the Disputed Domain Names, when taken together, match a number of criteria which would indicate that non-legitimate motives behind the registration are more probable than not.
The Complainant concludes that the Disputed Domain Names have been registered and are being used in bad faith.
The Complainant requests that the Panel issue a Decision that the Disputed Domain Names be transferred to the Complainant.
The Respondent filed an initial Response by email on July 20, 2017, in which it said that it stood by earlier correspondence mentioned in Annex 05 to the Complaint and then a further substantive Response dated July 22, 2017 and then a further email of August 17, 2017. This all related to the identity point above and the Panel notes that this has been dealt with by the part of the Decision that deals with referring to the Respondent as “Name Redacted” and Annex 1 to the Decision.
Paragraph 3(c) of the Rules provides that the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. That is the case in this Administrative Proceeding, so it is perfectly in order for the Panel to deal with both the Disputed Domain Names in one Decision resulting from one Complaint.
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and that the Disputed Domain Names have been registered and are being used in bad faith.
The Panel accepts that the Complainant has established both registered and common law rights in its HMRC trademark. The Complainant owns a registered trademark in the UK and uses a large number of domain names in connection with its business, those domain names all having the common element of the letters “hmrc”. The Complainant’s trademark HMRC, first registered in 2007 but first used many years before, has become well known as a result.
The Panel will refer to the Disputed Domain Names as such in this Decision and not distinguish between them. They may be slightly different but they both contain the element “HMRC”, with the addition of the term “tax return” and the addition in one of them of a hyphen.
The Panel also accepts the Complainant’s submission that the Disputed Domain Names are confusingly similar to the Complainant’s trademark HMRC. It is well established that the addition of descriptive material or the addition of a gTLD or other non-distinctive element is not sufficient to avoid confusing similarity. The dominant element of the Disputed Domain Names is the Complainant’s trademark HMRC.
The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark HMRC and that paragraph 4(a)(i) of the Policy is satisfied.
The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Names. The Panel notes that the Complainant has not permitted or licensed the Respondent to use the HMRC trademark and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the Complainant’s well-known HMRC trademark when it registered the Disputed Domain Names. There is no evidence that the Respondent has used or prepared to use the Disputed Domain Names and nor is there any evidence that the Respondent was commonly known by the Disputed Domain Names, so those avenues are not available to the Respondent, not least because of the passive use of one Disputed Domain Name and the link to pay-per-click advertising in relation to the other.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that paragraph 4(a)(ii) of the Policy has been met.
The Panel accepts the submissions of the Complainant on this head, including in relation to the unauthorized use of the registrants’ details in an apparent identity theft scheme, and finds that the Disputed Domain Names have been registered and are being used in bad faith.
The Panel finds that the Disputed Domain Names have been registered and are being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <taxreturn-hmrc.com> and <taxreturnhmrc.com> be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: August 21, 2017
1 The Respondent appears to have used the name and contact details of a third party when registering the Disputed Domain Names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the Disputed Domain Names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrars 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.