WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted / Name Redacted

Case No. D2020-1933

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted / Name Redacted¹.

2. The Domain Names and Registrar

The disputed domain names <hmrc-taxrebate.com> and <hmrctaxrefund-2020.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 27, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.

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 Respondent of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on September 2, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 16, 2020. 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

Complainant, known as “Her Majesty’s Revenue and Customs”, which is abbreviated to “HM Revenue and Customs” or “HMRC,” is the United Kingdom Government institution responsible for the collection of taxes, the payment of some forms of state support and the administration of other regulatory regimes.

Complainant is the proprietor of a trademark registration for the HMRC mark (the “HMRC Mark”), namely, United Kingdom registration No. UK00002471470 for HMRC (word mark), registered on March 28, 2008, for goods and services in classes 9, 16, 35, 36, 41, and 45. Complainant is also the proprietor of United Kingdom registration No. UK00003251234 for HM REVENUE & CUSTOMS (combined mark), registered on December 29, 2017, for goods and services in classes 9, 16, 35, 36, 41, and 45.

Complainant operates a consumer website that may be accessed through the domain name <hmrc.gov.uk>.

The disputed domain names were registered by Respondent on June 19, 2020. They currently do not resolve to active websites, but previously resolved to websites that mimicked the look and feel of Complainant’s website through which visitors were invited to enter personal information ostensibly for the purpose of obtaining tax rebates. The Panel accepts evidence provided by Complainant to the effect that major browsers have blocked access to the websites due to reported fraudulent activity, such as phishing or malware distribution.

The record contains a copy of a cease-and-desist letter sent by Complainant to Respondent regarding the disputed domain names dated July 21, 2020.

5. Parties’ Contentions

A. Complainant

Under the first element, Complainant states that it owns trademark registrations for HMRC and related marks in the United Kingdom, and has common-law rights in these marks through extensive use and publicity dating from the establishment of the government entity under that name in 2005. The HMRC Mark is readily visible in both disputed domain names, and the dictionary terms “tax rebate” and “tax refund 2020” do not diminish the confusing similarity. Complainant states that it has previously encountered domain names impersonating Complainant established by parties attempting fraudulent activities, and that the disputed domain names and the websites to which they resolved fit this pattern.

Under the second element, Complainant states that Respondent is not known as “HMRC” and has not previously used this name. The disputed domain names are associated with phishing websites, which is a type of activity that can never confer rights nor legitimate interests on a respondent. There is no possible legitimate use to which the disputed domain names could be put.

Under the third element, Complainant states that the disputed domain names were used for phishing websites. The disputed domain name <hmrc-taxrebate.com> resolves to a website that is nearly identical in appearance to the official website of the United Kingdom government at “www.gov.uk.” The purpose of these websites is to deceive Internet users and obtain personal information from them to gain access to and control over third-party websites. Further, Respondent shielded his identity by using a privacy service, and did not respond to Complainant’s cease-and-desist letter concerning the disputed domain names.

Complainant requests transfer of the disputed domain names, and additionally requests that the Panel consider redacting from the Decision the names of the registrants, as those appear to be false names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Issues: Consolidation of Respondents and Redaction

Noting the circumstances of the case, and despite differences between the pseudonyms provided by the Registrar for the registrants of the disputed domain names, the Panel considers Respondent to be a single entity. The disputed domain names, registered on the same day and resolving to similar websites, appear to be subject to common control, and consolidation would be fair and equitable to all Parties. Accordingly, the Panel accepts the Complainant’s request to consolidate the present proceeding pursuant to the Rules, paragraph 10(e). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 4.11.2.

Complainant has invited the Panel to redact the names of the registrants because the email addresses given for those registrants bear no relation to the names given for the registrants or to each other, and the address for at least one of the registrants appears to be fake. While there is nothing before the Panel to indicate directly that these names and addresses haves been used without permission, the Panel believes it to be probable that this is the case.

In the view of the Panel, it would be wrong in light of these likely identity thefts for these likely innocent bystanders to appear as Respondents in the published decision. Accordingly, the Panel has redacted the individuals’ names from the caption and body of this decision. Attached as Annex 1 to this decision is the Panel’s instruction to the Registrar regarding transfer of the disputed domain names. Annex 1 names the named registrants of the disputed domain names and authorises the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 shall not be published, given the exceptional circumstances of this case.

B. General

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) Respondent has registered and is using the disputed domain names in bad faith.

C. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the HMRC Mark through registration in the United Kingdom, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.

In comparing Complainant’s HMRC Mark with the disputed domain names, the Panel finds that both disputed domain names are confusingly similar with the HMRC Mark. The disputed domain names <hmrc-taxrebate.com> and <hmrctaxrefund-2020.com> contain the HMRC Mark in its entirety. The addition of the terms “tax rebate” and “tax refund 2020” do not prevent a finding of confusing similarity with the HMRC Mark, which is clearly recognizable within the disputed domain names.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

Furthermore, it is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to a domain name does not prevent the domain name from being confusingly similar to the complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain names, Respondent had no rights or legitimate interests therein. The nature of the disputed domain names, which contain Complainant’s HMRC Mark together with dictionary terms, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

There is no evidence of legitimate noncommercial or fair use of the disputed domain names, as the evidence in the record clearly demonstrates that the disputed domain names resolve to phishing websites through which Respondent has attempted to impersonate Complainant for fraudulent purposes. Such use can never confer rights or legitimate interests on Respondent. See WIPO Overview 3.0, section 2.13.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, and Respondent has not provided any evidence or arguments to the contrary.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

The Panel finds bad faith registration under the Policy. Complainant’s rights in the HMRC Mark predate by over a decade the registration of the disputed domain names. The nature of the domain names, consisting of the HMRC mark together with the terms “tax rebate” and “tax refund 2020,” are clearly designed to confuse Internet users into believing that the websites are operated by the United Kingdom government. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain names were registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain names. The Panel finds that Complainant has provided sufficient evidence to support the finding that Respondent has established and operating websites for the purpose of phishing. Such unlawful use is clearly demonstrative of bad faith.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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, <hmrc-taxrebate.com> and <hmrctaxrefund-2020.com>, be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: September 30, 2020

¹ The Panel has concluded that the named Respondents were not in fact individuals responsible for the registration and use of the disputed domain names and has directed that the names of those identified by the Registrar as the registrants of the disputed domain names should be redacted from this decision. Further, for reasons, which are set out below, the Panel has consented to the consolidation of the actions in respect of both disputed domain names. All references in this decision to “Respondent” are references to the unknown underlying registrant of the disputed domain names.