Analysis of WIPO Domain Name Dispute Case D2018-0348: The Struggle Against Cybersquatting

In the domain name dispute case D2018-0348, adjudicated under the Uniform Domain Name Dispute Resolution Policy (UDRP) by the World Intellectual Property Organization (WIPO), the conflict revolved around the domain name hmrcrevenuegovuk.com. The complainant in this case was The Commissioners for HM Revenue and Customs from London, United Kingdom, represented by Demys Limited. The respondent was Domains By Proxy, LLC DomainsByProxy.com of Scottsdale, Arizona, United States of America, and Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.

The case was initiated when the complaint was filed with the WIPO Arbitration and Mediation Center on October 16, 2018. The domain name in dispute, registered with GoDaddy.com, LLC, was created on July 16, 2018, and at the time of the dispute, it resolved to a pay-per-click (PPC) website.

The crux of the complaint lay in the claim that the domain name was confusingly similar to the Complainant’s registered trademark HMRC, which stands for “Her Majesty’s Revenue and Customs”. The Complainant, being the United Kingdom’s tax and customs authority, holds the UK registered trademark No. 2471470 for HMRC, filed on November 5, 2007, and registered on March 28, 2008. They argued that their identity and the acronym “hmrc” are well known both in the UK and internationally. Further, they pointed out their frequent targeting by phishing and other online scams, asserting that the Respondent’s activities fit this pattern of abuse.

The Complainant cited several analogous cases where domain names incorporating HMRC were ordered to be transferred to them. They contended that the disputed domain name was deliberately confusingly similar to their trademark, and that the Respondent neither had rights nor legitimate interests in it. They alleged that the domain name was registered in bad faith and used for a PPC site for various services, indicating bad faith.

The Complainant had sent a cease and desist letter to the Respondent, but received no reply. Their ultimate request was for the disputed domain name to be transferred to them.

The Respondent did not reply to the Complainant’s contentions, leading to a default notice by the Center.

In its deliberation, the WIPO Panel found that the disputed domain name was indeed confusingly similar to the Complainant’s trademark. The terms “revenue”, “gov”, and “uk” added to the domain name did not mitigate this confusion but rather appeared to deliberately increase it, given the Complainant’s role and government affiliation. Consequently, the Panel agreed that the domain name was confusingly similar to the Complainant’s trademark, fulfilling the first condition of the UDRP.

Regarding the rights or legitimate interests in the domain name, the Panel concurred with the Complainant’s assertion that there was no evidence of the Respondent’s rights or legitimate interests in the domain name. The Panel’s decision was informed by the lack of response from the Respondent, as well as the absence of any authorization from the Complainant for the Respondent to use the trademark.

The detailed examination of the case and the Panel’s rationale for their decision highlight the complexity and nuances involved in domain name disputes, especially in cases of potential cybersquatting and trademark infringement. This case serves as a significant example of the legal mechanisms in place to protect trademark owners from potential abuses in the digital domain​​​​​​.

In the domain name dispute case D2018-0348, adjudicated under the Uniform Domain Name Dispute Resolution Policy (UDRP) by the World Intellectual Property Organization (WIPO), the conflict revolved around the domain name hmrcrevenuegovuk.com. The complainant in this case was The Commissioners for HM Revenue and Customs from London, United Kingdom, represented by Demys Limited. The respondent…