The Complainant is the Commissioners for HM Revenue and Customs, United Kingdom (“UK”), represented by Demys Limited, UK.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Void Prices, UK.
The disputed domain name <gov-hmrc-tax-rebate.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 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 April 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 April 30, 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Adam Samuel as the sole panelist in this matter on June 2, 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.
The Complainant is a non-ministerial department of the UK Government, responsible for the collection of taxes. It provides information about its activities through a website contained within the UK Government’s official portal, which can also be accessed through the domain name <hmrc.gov.uk>.
The Complainant owns a UK trademark number 2471470, with a filing date of November 5, 2007 and registration date of March 28, 2008 for the name HMRC by which it is commonly known.
The disputed domain name was registered on April 5, 2021. When the Complaint was filed, the website to which it had previously resolved had been disabled. Previously, the Google Safe Browsing service had reported that the disputed domain name was unsafe in that it contained harmful content including pages trying to trick visitors into sharing personal information or downloading software. McAfee Web Advisor currently contains a similar warning.
The disputed domain name only differs from the Complainant’s trademark by the addition of the dictionary words “tax” and “rebate” and the abbreviation “gov”. These words and the abbreviation are inherently associated with the Complainant and its activities. The Complainant’s mark is the most prominent, dominant and distinctive element of the disputed domain name. When combined with the Complainant’s well-known mark, the adornments “gov” and “tax-rebate” do not dispel any possibility of confusion but increase the potential for confusion among Internet users. The generic Top-Level Domain (“gTLD”) “.com” is required only for technical reasons and can be ignored for the purposes of comparison of the disputed domain name to the Complaint’s marks. Equally, the hyphens featured in the disputed domain name do not further distinguish it from the Complainant’s marks.
The Respondent has not been commonly known by the names “hmrc” or “gov hmrc tax rebate” prior to or after the disputed domain name’s registration. The Respondent has not received any permission, consent or acquiescence from the Complainant to use its marks or name in association with the registration of any domain name. The Respondent does not own any trademarks that incorporate or are similar or identical to the terms “hmrc” or “gov hmrc tax rebate”.
The disputed domain name has been flagged as being used for phishing or other criminality by a reputable third party, Google’s Safe Browsing Service. In any event, this is a case of passive holding. The Complainant’s trademark is very distinctive and there is a high degree of implausibility of any good faith use to which the disputed domain name could be put.
The Respondent did not reply to the Complainant’s contentions.
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; and
(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.
The disputed domain name consists of the Complainant’s distinctive trademark HMRC, which is also the commonly used UK acronym for the Complainant, preceded by “gov” and a hyphen and followed by “tax”, a hyphen, “rebate” and the gTLD “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant’s trademark is an acronym with no ordinary meaning other than to describe the Complainant. The abbreviation “gov” which precedes it usually connotes, in the UK, domain names of the Government of which the Complainant is a department. The word “tax” describes much of the Complainant’s income and “rebate” is a type of payment sometimes made by the Complainant to those who have overpaid their tax. The addition of abbreviations such as “gov” and words like “tax” and “rebate” to a trademark with or without hyphens does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark.
Section 1.8 of the WIPO Overview 3.0 says:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Respondent is not called “hmrc”, “gov”, “tax” or “rebate” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any legitimate purpose that can be identified. Based on the available record, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant’s trademark HMRC is a word without any ordinary meaning except as the common acronym of the Complainant. By virtue of the Complainant’s function, the HMRC trademark is in extremely common usage in the UK to describe the Complainant. As such, it is highly distinctive. In the disputed domain name, the Respondent has combined the Complainant’s trademark with references to the Complainant’s status as a department of the UK Government and its functions of receiving taxes and paying rebates.
From this, the Panel concludes that the Respondent knew of the Complainant’s activities when it registered the disputed domain name. The Respondent appears to have done this to disrupt the Complainant’s activities by attracting to its own website Internet users seeking the Complainant’s website. See also section 3.3 of the WIPO Overview 3.0.
For these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith: UDRP, paragraph 4(b)(iv).
This conclusion is reinforced by the warnings of reputable third-party entities about the illegal use, which the Respondent has made of the disputed domain name.
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 <gov-hmrc-tax-rebate.com> be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: June 8, 2021