The Commissioners for HM Revenue and Customs v angela medwards

WIPO Case No. D2022-2243

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Commissioners for HM Revenue and Customs v. angela medwards

Case No. D2022-2243

1. The Parties

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

Demys Limited, United Kingdom.

The Respondent is angela medwards, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <hmrcsuk-gov.org> is 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 June 21, 2022.

On June 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2022, 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 July 1, 2022, 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 July 1, 2022.

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 the due date for Response was August 8, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 12, 2022.

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The Center appointed Lyons, Debrett G. as the sole panelist in this matter on August 17, 2022. 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 factual findings pertinent to the decision in this case are that:

(1) the Complainant is a non-ministerial department of the United Kingdom Government responsible for

the collection of taxes, the payment of certain forms of state support and the administration of certain
regulatory regimes;

(2) the Complainant is formally known as “Her Majesty’s Revenue and Customs” which is often shortened

to “HM Revenue and Customs” or “HMRC”;

(3) the Complainant is the registered proprietor of United Kingdom Intellectual Property Office (“UKIPO”)

registration number 2471470 dated March 28, 2008, for the trade mark, HMRC (the “Trade Mark”); and

(4) the disputed domain name was registered on April 10, 2022, and has not been used.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights in HMRC. It holds a national registration for the Trade Mark and submits that the disputed domain name is confusingly similar to the Trade Mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not known by the domain name and the name has not been used.

The Complainant alleges that the Respondent registered the disputed domain name in bad faith having targeted the Complainant and that there is no plausible good faith use to which the domain name could be put in the future.

The Complainant requests the Panel to order transfer of the disputed domain name.

B. Respondent

The Respondent did not submit a Response.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

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It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a

complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is
identical or confusingly similar to the trade mark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national or international trade mark authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of its registration of

the Trade Mark with the UKIPO, a national authority, and so the Panel finds that the Complainant has trade
mark rights.

The Complainant submits that the disputed domain name is confusingly similar to the Trade Mark. In particular, it argues that the disputed domain name:

“… only differs by the additions of the letter ‘s’, ‘UK’, seemingly in this context an initialism of

‘United Kingdom’, and the generic term ‘gov’, presumably in this context a contraction of the

word ‘government’. By virtue of it being the United Kingdom’s governmental tax authority the

Complainant contends that the terms ‘UK’ and ‘gov’ are inherently associated with the

Complainant and its activities.

The Complainant further notes that ‘gov’ is a term commonly used by governments to denote a website related to governmental business. … Viewed as a whole, the Complainant’s mark is the most prominent, dominant, and distinctive element of the disputed domain name.”

The Panel is in complete agreement with those submissions. For the purposes of comparing the disputed

domain name with the Trade Mark, the generic Top-Level Domain (“gTLD”) “.com” can be disregarded.2

The other additions to the Trade Mark do not prevent a finding of confusing similarity under the first element.

See section 1.8 of the WIPO Overview 3.0.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark and so finds that the

Complainant has satisfied paragraph 4(a)(i) of the Policy.3

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.4

1 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

2 See section 1.11.1 of the WIPO Overview 3.0.

3 See, for example, The Commissioners for HM Revenue and Customs v. Ivan Luganov, WIPO Case No. D2017-2504 which concerned

the domain names <hmrcinfo-gov.net>, <hmrcreport-gov.com>and <hmrcreports-gov.com>; The Commissioners for HM Revenue and

concerned the domain name <hmrcukgov.com>; and The Commissioners for HM Revenue and Customs v. Privacy Service Provided by Withheld for Privacy ehf / Frank Bellucio, WIPO Case No. D2022-0686 which involved <uk-hmrc-gov.com>, all resulting in transfer to the at-issue domain name(s) to the Complainant and, by implication, findings of confusing similarity of the compared terms un paragraph 4(a)(i) of the Policy.

4 See, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

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Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

“(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 publicly available WhoIs data obscured from public view the name of the underlying registrant of the disputed domain name due to data protection regulations. In consequence of these proceedings the

Registrar identified the registrant as “angela medwards”, which does not suggest that the Respondent might

be commonly known by the disputed domain name. The Panel finds no other evidence that the Respondent
might be commonly known by the disputed domain name.

There is no evidence of an association between the parties and no evidence that the Respondent has any trade mark rights of its own. Nor is there any evidence of use of the disputed domain name.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Absent a Response, the Respondent has not rebutted this prima facie case. Accordingly, the Panel finds
that the Respondent has no rights or legitimate interests in the disputed domain name and so finds that the

Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily

for the purpose of selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out-of-pocket costs directly related to the

domain name; or

(ii) you have 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 you have engaged in a

pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain,

Internet users to your 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 your website or

location or of a product or service on your website or location.”

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The evidence does not in an obvious way support the application of any of those scenarios, but the Panel

finds, as separate matters, registration in bad faith and “use” in bad faith. Further, in addition to its registered
rights, the Complainant asserts common law trade mark rights in the initialism “HMRC” since 2005. The

Panel accepts by reason of the evidence provided that the initialism “HMRC” is known in the United Kingdom and the Respondent was aware of the Complainant’s Trade Mark at the moment of registration of the

disputed domain name.

Against these background findings, and additionally the reasons for the finding of confusing similarity under paragraph 4(a)(i), the Panel concludes that the disputed domain name was chosen and registered in bad faith with the Complainant and the Trade Mark in mind. Further, the Panel is in agreement with the Complainant’s reliance upon 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, and (iii) the implausibility of any good

faith use to which the domain name may be put.

The Panel is satisfied that each of those factors weights against the Respondent in this case and,

notwithstanding the absence of use of the disputed domain name, finds “passive holding” and use in bad

faith.

The Panel therefore finds that the Complainant has satisfied the third and final element 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 name, <hmrcsuk-gov.org>, be transferred to the Complainant.

/Debrett Lyons/

Debrett Lyons

Sole Panelist
Date: August 29, 2022