WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. Ivan Luganov

Case No. D2017-2504

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” or “UK”), represented by Demys Limited, United Kingdom.

The Respondent is Ivan Luganov of Rostov, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <hmrcinfo-gov.net>, <hmrcreport-gov.com> and <hmrcreports-gov.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, the Registrar transmitted by email to the Center its verification response 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 January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on February 16, 2018. 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. Through its collection, compliance and enforcement activities it ensures that money is available to fund the UK’s public services. Additionally, it administers statutory payments and provides tax credits. The Complainant has as a direct customer almost every individual and business in the United Kingdom.

The Complainant owns the UK trademark 2471470 for HMRC, registered on November 5, 2007, in classes 9, 16, 25, 26, 35, 36, 38, 41, 42 and 45.

The Complainant operates a website under the UK Government’s “www.gov.uk” portal, which can be accessed through the domain name <hmrc.gov.uk>.

The Complainant is well-known in the UK and beyond as HMRC. Most search results for the term “HMRC” carried out on the search engine “www.google.co.uk” relate directly to the Complainant, and publications from around the world refer to the Complainant using the term “HMRC”. Furthermore, the Complainant has over 16,300 “followers” on Facebook and over 350,000 on Twitter from around the world.

Previous panels have held that the Complainant’s mark and reputation spread far beyond the United Kingdom. See, e.g., The Commissioners for HM Revenue and Customs v. James Gamme, WIPO Case No. D2017-0350, The Commissioners for HM Revenue and Customs v. Wei Wang, APIS, WIPO Case No. D2017-1492 and The Commissioners for HM Revenue and Customs v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0545.

The Complainant has successfully asserted its rights in previous cases under the UDRP in complaints relating to domain names including <hmrc-tax-service.com>, <hmrctax-refunds.com>, <hmrevenuecustom.com>, <hmrconline.gov>, and <hmrcgov.org>, and in complaints where the disputed domain names incorporated generic terms together with the Complainant’s HMRC mark and were passively held.

The disputed domain names were all registered on November 20, 2017, and do not resolve to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain names are confusingly similar or identical to the Complainant’s registered trademark, HMRC, in light of the fact that they wholly incorporate the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain names.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain names that include its trademark.

The disputed domain names have been registered and are being used in bad faith.

- The Complainant asserts that the disputed domain names were registered and are used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b).

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of the HMRC trademark, and is the owner of many domain names for HMRC or including the name HMRC, as indicated in Section 4 above.

The disputed domain names wholly incorporate the Complainant’s registered HMRC trademark. They differ from the Complainant’s HMRC mark only by the addition of the words “info”, “report(s)” and “gov”. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy. See, among others, Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675.

The addition of the generic terms “info” and “report(s)” can be ignored for the purposes of comparison of the Complainant’s HMRC trademark to the disputed domain names. Equally, the hyphens in each of the disputed domain names does not further distinguish them from the Complainant’s trademark.

Given that the Complainant is the UK Government’s sole tax service and that the term “gov” is a clear contraction of the English word “government”, the word “gov” does not distinguish the disputed domain names from the Complainant’s mark. In fact, the word “gov” may only serve to increase the potential for confusion between the disputed domain names and the Complainant’s business.

In the light of the foregoing, the Panel finds that the disputed domain names <hmrcinfo-gov.net>, <hmrcreport-gov.com>, and <hmrcreports-gov.com> are confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no right or legitimate interest in the disputed domain names.

The Respondent is not commonly known by the disputed domain names or by any combination of the terms HMRC, “info”, “report(s)”, and “gov”. It does not own any trademarks that incorporate or are similar or identical to the Complainant’s HMRC trademark or to the terms present in the disputed domain names. The Complainant has never licensed or otherwise authorized the Respondent to use its trademark or to register a domain name comprising its trademark. There is no commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use or register the disputed domain names.

The Respondent registered the disputed domain names at least ten years after the Complainant filed for registration of its HMRC trademark referenced in Section 4 above. The Respondent cannot claim to have been using the HMRC trademark without having been aware of the Complainant’s rights to it. This suggests that the Respondent’s interests cannot have been legitimate.

The disputed domain names have not been used in connection with bona fide offerings of goods or services. The websites associated with the disputed domain names have remained inactive since their registration. Previous Panels have held that the passive holding of domain names does not establish legitimate interests or bona fide use of a domain name. See Microsoft Corporation v. Charilaos Chrisochoou, WIPO Case No. D2004-0186.

It is difficult to conceive of any use to which the disputed domain names could be put either now or in the future that would not infringe the Complainant’s rights (or cause confusion, given that the disputed domain names are confusingly similar to the Complainant’s registered mark and name).

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

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 documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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.

As indicated in Section 4 above, the Complainant’s HMRC trademark was registered long before the disputed domain names, and the Complainant is widely known in the United Kingdom and globally as HMRC. The Respondent must have been aware of the existence of the Complainant’s rights in the trademark and in the name HMRC when registering the disputed domain names, especially given the inclusion of the word “gov” which could reasonably be interpreted to relate to the Complainant when incorporated into a domain name including the Complainant’s HMRC mark.

The websites associated with the disputed domain names have, since registration, remained inactive. Previous panelists have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding.

The Complainant did not receive a response to its correspondence or Complaint. A bona fide registrant would likely have responded with evidence of a good faith use when approached by a rights holder with a reasonable complaint relating to their domain names. That the Respondent has failed to do so is indicative that the Respondent is unable to put forward any such evidence of actual or contemplated good faith use.

The Complainant and its customers are frequently targeted by phishing and other online scams. Although the Complainant has been unable to exhibit direct evidence of fraudulent use in relation to the disputed domain names, it observed that there are several characteristics which are common to the domain names that have been used to target it for fraudulent or other abusive purposes. These include the use of domain names made up of the Complainant’s mark and one or more generic terms, and use in the domain name of terms associated closely with the Complainant. These characteristics are present in the disputed domain names, which suggests that they were registered for fraudulent or illegitimate use.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

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, <hmrcinfo-gov.net>, <hmrcreport-gov.com> and <hmrcreports-gov.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: February 28, 2018