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 / ryan gubb

Case No. D2021-1249

1. The Parties

The Complainant is The Commissioners for HM Revenue and Customs, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / ryan gubb, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <hmrc-claim-taxreturn.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 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 23, 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 23, 2021.

The Center verified that the Complaint together with 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 April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021.

The Center appointed Ian Blackshaw as the sole panelist in this matter on May 20, 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 formally known as “Her Majesty’s Revenue and Customs” and this is often shortened to “HM Revenue and Customs” or the initials “HMRC”.

The Complainant is a non-ministerial department of the United Kingdom (“UK”) Government and is responsible for the administration and collection of direct taxes within the UK, including Income Tax, Corporation Tax, Capital Gains Tax and Inheritance Tax. It also collects indirect taxes, including Value Added Tax, Excise Duties, and Stamp Duty Land Tax, and environmental taxes such as Air Passenger Duty and the Climate Change Levy. Other aspects of the Complainant’s responsibilities include the collections of National Insurance Contributions, the distribution of Child Benefit, and some other forms of state support, including the Child Trust Fund, payments of Tax Credits, and enforcement of the National Minimum Wage.

The Complainant, in its present form and with its current name, was created by the merger of the Inland Revenue and HM Customs and Excise in April 2005. It was established in The Commissioners for Revenue and Customs Act, 2005.

As the UK Government’s tax authority, almost every UK individual and business is a direct customer of the Complainant and user of its services.

The Complainant operates a website within the UK Government’s official portal at “www.gov.uk/government/organisations/hm-revenue-customs”. This site can also be accessed through the domain name <hmrc.gov.uk>.

The Complainant has successfully asserted its rights in previous UDRP cases, details of which have been provided to the Panel.

The Complainant is the proprietor of several relevant UK trademarks, which are listed below, and copies of extracts from the relevant databases have been provided to the Panel:

The Complainant’s earlier mark 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 April 16, 2021, and resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to its marks in that it only differs by the addition of the dictionary words “claim tax return”. By virtue of it being the United Kingdom’s governmental tax authority, the Complainant contends that the words “claim tax return” are inherently associated with the Complainant and its activities.

Viewed as a whole, the Complainant’s mark HMRC is the most prominent, dominant, and distinctive element of the disputed domain name. When combined with the Complainant’s well-known mark, the adornment “claim tax return” does not dispel any possibility of confusion, but instead does the opposite and increases the potential for confusion amongst Internet users. The Complainant, therefore, contends that the disputed domain name is confusingly similar to its marks.

See The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-1333, which concerned the domain name <taxreturn-hmrc.com>, and The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Sha Besn WIPO Case No. D2021-0342, which is related to the domain name <hmrc-tax-return-online.com>.

The respective panels held that each domain name was confusingly similar to the Complainant’s mark.

For completeness, the Complainant contends that the top-level domain name “.com” is required only for technical reasons and, as in common in proceedings under the UDRP, can be ignored for the purposes of comparison of the disputed domain name with the Complainant’s marks. Equally, the hyphens featured in the disputed domain name do not further distinguish it from the Complainant’s marks.

For these reasons, the Respondent’s disputed domain name must be considered to be confusingly similar to the Complainant’s marks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant refers to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which asks: “How do panels assess whether a respondent lacks rights or legitimate interests in a domain name?” and answers:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Accordingly, the Complainant seeks to make out a prima facie case to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain name.

Not known as HRMC and no prior use

The Complainant has found no evidence that the Respondent has been commonly known by the names “hmrc” or “hmrc claim tax return” prior to or after the registration of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any permission, consent, or acquiescence from the Complainant to use its marks or name in association with the registration of the disputed domain name or, indeed, any domain name, service, or product.

The Complainant has found nothing to suggest that the Respondent owns any trademarks that incorporate or are similar or identical to the terms “hmrc” or “hmrc claim tax return”. Equally, the Complainant has found no evidence that the Respondent has ever traded or operated as “hmrc” or “hmrc claim tax return”.

Phishing website

The Complainant has noted that the disputed domain name has been flagged by a reputable third party as having been used for phishing or other criminal activity, evidence of which has been provided to the Panel.

The Complainant refers to section 2.12 of WIPO Overview 3.0, which asks: “How do panels treat complainant claims of illegal (e.g., counterfeit) activity in relation to potential respondent rights or legitimate interests?” and answers:

“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.

The Complainant avers that the use of the disputed domain name for criminal activity, such as phishing or malware distribution, could never give the Respondent a legitimate interest in the disputed domain name. See TELUS Corporation v. Domain Admin, Privacy Protect, LLC / Mayur Mangesh Rege, Mayur Consultants, WIPO Case No. D2018-0388, where the domain name concerned was also being used for phishing and in which the panel noted:

“As submitted by the Complainant, the Panel considers it likely that the Respondent is involved in phishing or some other financial scam. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services”.

Furthermore, the Complainant contends that it is highly unlikely that the Respondent intended to use the disputed domain name for any legitimate or fair use and, indeed, any such use is completely at odds with the use of the disputed domain name to deceive Internet users.

The Complainant cannot conceive of any use to which the disputed domain name could be put now or in the future that would not infringe the Complainant’s rights. Likewise, the Complainant contends that the disputed domain name could not be used in any manner without causing widespread confusion, given that the disputed domain name is confusingly similar to the Complainant’s registered mark and name.

In all these circumstances, the Complainant asserts that it has established a prima facie case, along the lines anticipated by section 2.1 of the WIPO Overview 3.0, that the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

The Complainant contends that the disputed domain name was registered and is being used in bad faith in terms of the Policy for the undernoted reasons:

Phishing website

The Complainant has observed that the disputed domain name has been flagged as being used for phishing or other criminality by a reputable third party, evidence of which has been provided to the Panel. The Complainant contends that attempting to deceive Internet users cannot be a bona fide use and avers that any such use must be abusive to or take unfair advantage of the Complainant’s rights. See The Commissioners for HM Revenue and Customs v. Name Redacted and Name Redacted, WIPO Case No. D2020-1389, in which the domain names were registered and used for phishing, finding that they were registered and used in bad faith the panel noted: “The use to which the Domain Names have been put is plainly fraudulent and the Domain Names will have been registered for that purpose”.

The Complainant contends that the facts of the present matter mirror those in the above case.

Passive holding

The Complainant notes that the website associated with the disputed domain name is no longer active and is, therefore, “passively held”. The Complainant asserts that such passive holding of the disputed domain name constitutes bad faith. The Complainant has referred to section 3.3 of the WIPO Overview 3.0 which notes:

“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

In terms of each of these points, the Complainant contends:

(i) the degree of distinctiveness or reputation of the complainant’s mark,

As mentioned above and evidenced, the Complainant is very well known in both in the UK and beyond, and its marks have been used for many years prior to the registration of the disputed domain name.

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use

The Complainant notes that the disputed domain name has been used for criminal purposes and, as such, is entirely incompatible with any good faith use.

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement)

The Respondent has redacted, or allowed the redaction, of its details from the public WhoIs.

(iv) the implausibility of any good faith use to which the domain name may be put

Given the fame, widespread use and reputation of the Complainant, as outlined above and supported by evidence, the Complainant contends that it is inconceivable that the Respondent could have registered the disputed domain name without the Complainant’s marks in mind and with good faith intentions. This is especially so given the inclusion of the term “claim tax return” which, in this context, could only reasonably relate to the Complainant and its activities when incorporated into a domain name that also includes the Complainant’s well-known name and marks.

Privacy service

The Complainant argues that the use of a privacy service by the Respondent is indicative of bad faith. The Complainant refers to section 3.6 of WIPO Overview 3.0, which asks: “How does a registrant’s use of a privacy or proxy service impact a panel’s assessment of bad faith?” and answers:

“There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith.”

Considering that the disputed domain name is confusingly similar to the Complainant’s marks and that there are other indicia of bad faith, including that the disputed domain name has been used for potentially criminal activity, the Complainant cannot see how the use of a privacy service can be legitimate in this case. Therefore, the Complainant avers that the use of a privacy service by the Respondent is indicative of bad faith.

For all these reasons, the Complainant contends that, singly or cumulatively, there are reasonable grounds to conclude that the disputed domain name is, on balance, likely to have been registered and used in bad faith in terms of the Policy.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002‑1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001‑0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000‑0140.

In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain dame incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000‑1525.

In the present case, the disputed domain name incorporates the Complainant’s well-known and widely used registered trademarks, and this makes the disputed domain name confusingly similar to the Complainant’s well-known and widely used registered trademarks.

Also, the Panel agrees with the Complainant’s contention that the addition in the disputed domain name of the words “claim” and “tax return” do not provide any distinguishing elements to prevent confusion.

Likewise, the same reasoning also applies to the use of the hyphens in the disputed domain name.

Furthermore, the addition of the generic Top-Level Domain “gTLD” “.com” may be disregarded in determining whether the disputed domain name is confusingly similar to the Complainant’s well-known and widely used registered trademarks, this being necessary for Internet registration purposes. See Blue Sky Software Corp. v. Digital Sierra, Inc. and Abdullah Khan, WIPO Case No. D2000-0165.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely used registered trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and prior commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004‑0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely used registered trademarks. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely used registered trademarks, which the Panel considers, as asserted by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities. The words “claim” and “tax return” add to the confusion of Internet users, as being descriptive of the Complainant’s activities as mentioned above. See The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-1333, which concerned the domain name <taxreturn-hmrc.com> and The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Sha Besn WIPO Case No. D2021-0342, which concerned the domain name <hmrc-tax-return-online.com>.

Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well‑known and widely used registered trademarks and also the valuable goodwill that the Complainant has established in those trademarks, through the Complainant’s prior commercial use, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003‑0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(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] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely used registered trademarks, is trading unfairly on the Complainant’s valuable goodwill established in such trademarks.

Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004‑0649.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its worldwide activity, as well as its well‑known and widely used registered trademarks and its prior commercial use of them.

Furthermore, the anonymity of the Respondent through the use of a privacy services organization also, in the view of the Panel, suggests, in the present case, bad faith on the part of the Respondent, particularly in view of the fact that, as mentioned above, the disputed domain name has been flagged as being used for phishing or other criminality. See The Commissioners for HM Revenue and Customs v. Name Redacted and Name Redacted, WIPO Case No. D2020-1389.

Also, the non-use of the website associated with the disputed domain name and, therefore, passively held is, in the view of the Panel, a further indication of bad faith.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, and also based on the previous UDRP cases cited above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <hmrc-claim-taxreturn.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: May 27, 2021