The Complainant is G4S Plc. of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by SafeNames Ltd., United Kingdom.
The Respondent is Decrypter Crons of Indianapolis, Indiana, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 26, 2017.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on September 5, 2017. 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, G4s Plc. is a British security services company initially founded in 1901 but which has been trading under its current name "g4s" since 2004. The Complainant is a public limited multinational company, which provides security products, services and solutions across six continents.
Although the Complainant's G4S trademark has been used in trade since 2004 it was only registered as a trademark since 2005. As part of its efforts to protect its intellectual property, the Complainant, its affiliates, subsidiaries and associated companies own trademarks within numerous jurisdictions including but the following trademarks:
Trademark
Country
Registration Number
Date of Registration
Class
G4S
International Registration
885912
October 11, 2005
1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, 45
G4S
Benelux
766792
June 3, 2005
1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, 45
European Union
004645297
May 15, 2007
9, 39, 45
G4S SECURING YOUR WORLD
International Registration
1184946
June 12, 2013
45
Brazil
827594992
August 31, 2010
35
United Kingdom
UK2391942
March 17, 2006
6, 9, 35, 37, 38, 39,45
G4S
European Union
015263064
September 20, 2016
6, 36, 37
G4S
United States
3378800
February 5, 2008
6, 16, 35, 36, 37, 38, 41, 42,44
United States
3378798
February 5, 2008
1,5,6,44,39,
41,9,16,35,36,
37,38,42,45
The Complainant registered its domain name (which resolves to the Complainant's website) "" on December 1, 1999. The Complainant has further registered its trademark in other domain names under different country code Top-Level Domains (ccTLDs).
The Respondent registered the disputed domain name on March 2, 2017. According to the evidence with the Complaint, the disputed domain name resolved to a website which included the Complainant's G4S trademark and with a similar look and feel to Complainant's website.
The Complainant sent a DMCA notice to the Internet service provider iFastnet, on March 16, 2017, based on the infringement of the Complainant's Intellectual Property rights. On the same day, the disputed domain name was suspended. However, on March 31, 2017, this was circumvented by the Respondent by changing its Internet service provider ("ISP"). 5. Parties' Contentions A. Complainant
The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with paragraph 4(i) of the Policy, on the following grounds:
Firstly, the Complainant asserts that the disputed domain name is identical or confusingly similar to the Complainant's G4S trademark because, inter alia:
(a) The Complainant has registered G4S as a trademark in various jurisdictions since 2005;
(b) The Complainant relies on the goodwill and recognition which it has built over the years in its G4S trademark in relation to the Complainant's goods and services;
(c) The distinctive value of the G4S trademark has been acknowledged by previous UDRP panels in previous cases;
(e) The disputed domain name is confusingly similar to the G4S trademark as it incorporates the Complainant's trademark in its entirety with the addition of the words "security" and "company"; and
(f) The suffix ".com" should be disregarded when comparing the disputed domain name with the Complainant's G4S trademark, as it is a merely a technical requirement for domain names.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interest in respect of the disputed domain name because, inter alia:
(a) The registration of the disputed domain name by the Respondent cannot come within any of the exceptions under Paragraph 4(c) of the Policy to justify any legitimate interest as the Respondent has not registered any trademark for the term "g4s" and, therefore, does not hold rights to the disputed domain name;
(b) The Complainant states that the Respondent has never been authorized or licensed to provide services under the G4S trademark;
(c) The Respondent has never been commonly known by the disputed domain name and has neither registered the disputed domain name as a trademark or acquired common law rights by way of widespread use over the years; and
(d) The disputed domain name currently resolves to an active website, where the Respondent allegedly impersonates the Complainant to try to make Internet users believe that the website is endorsed or affiliated with the Complainant. In addition the Respondent misleads consumers by diverting them to its own website, which advertises services similar to that of the Complainant, i.e. the delivery of sensitive or hazardous consignments. By offering competing services under the Complainant's G4S trademark, the Respondent is intending to intercept commercial gain intended for the Complainant.
Finally, the Complainant alleges that the Respondent had registered and used the disputed domain name in bad faith because inter alia:
(a) The Respondent tries to impersonate the Complainant's brand, which "automatically proves that the Respondent knew of the Complainant's goodwill and reputation at the time of the registration of the disputed domain name";
(b) Even though the disputed domain name was suspended on March 16, 2017, the Respondent changed its ISP and the website was reactivated, displaying the same content, which illustrates the Respondent "consistent intent to take advantage of the Complainant's 'G4S' brand";
(c) The Respondent's portfolio shows that the Respondent registered different domain names incorporating trademarks from third parties, without any apparent authority to do so from those entities and the Respondent also targets security-related companies and registered different domain names incorporating the terms "security" and "company";
(d) The Respondent attempts to impersonate the Complainant by proposing delivery services for dangerous goods, which may cause disruption to the Complainant's businesses. Consequently, the Respondent has intentionally attempted to attract Internet users to its website, by creating a confusion among users as it incorporates the Complainant's mark and logo, with the intention of generating revenue; and
(e) The Respondent appears to register other domain names incorporating well-known trademarks and setting up websites in order to attract Internet users to misleading websites. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Since the Respondent failed to file a Response, this administrative proceeding will decide on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw appropriate inferences in accordance with paragraph 14(b) of the Rules. The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) of the Policy:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This Panel is satisfied that the Complainant has rights in the G4S trademark.
This Panel accepts the Complainant's submission that the generic Top-Level Domain suffix ".com" should be disregarded in determining whether the disputed domain name is identical or similar to the Complainant's marks. See VAT Holding AG v. V,WIPO Case No. D2000-0607.
The disputed domain name fully incorporates the Complainant's G4S mark, adding the words "security" and "company". Disregarding the ".com" suffix, the Panel finds that the addition of the terms "security" and "company" does not alleviate the confusing similarity that arises from the Respondent's complete inclusion of the Complainant's "G4S" trademark. This Panel subscribes to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that descriptive terms would not prevent a finding of confusing similarity under the first element. Based on the undisputed facts in the Complaint, this Panel agrees that the addition of the terms "security" and "company" are not sufficient to avoid a finding of confusing similarity. See M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts,WIPO Case No. D2015-1384.
Therefore, this Panel finds that the disputed domain name is confusingly similar to the Complainant's G4S trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(a) the use of the domain name in connection with a bona fide offering of goods and services;
(b) being commonly known by the domain name; or
(c) the making of a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name in order to satisfy the requirement of UDRP paragraph 4(a)(ii). The burden of production then shifts to the Respondent to rebut that prima facie case. See UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES,WIPO Case No. D2000-0416.
This Panel accepts the Complainant's submission that the use of the disputed domain name does not constitute bona fide offering of goods and services, and that there is no evidence that the Respondent specializes in the delivery of dangerous goods and non-hazardous consignments door-to-door worldwide. Based on the evidence on record, this Panel is of the view that the Respondent purportedly offers competing services using the Complainant's G4S trademark. This Panel also accepts that the Respondent has no authorization or license to provide services under the Complainant's G4S trademark and that the Respondent has no affiliation with the Complainant.
Secondly, this Panel accepts the Complainant's assertion that the mere ownership of a domain name is not sufficient to show that a respondent has been commonly known by that domain name. With the lack of response from the Respondent, the Respondent has failed to show that at the time of registration, the Respondent was commonly known by the disputed domain name.
Thirdly, based on the evidence provided by the Complainant, the fact that the Respondent's website expressly offers services similar to that of the Complainant, i.e. the delivery of sensitive or hazardous consignments, by offering competing services under the Complainant's G4S trademark, does not constitute a legitimate non-commercial or fair use. The similarities in the disputed domain name and the logo used in the website it resolves to, coupled with the use of the words "security" and "company", appearing in both the website and the disputed domain name, carry a strong risk of implied affiliation which rebuts any plausible fair use by the Respondent. See Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / UFCW International Union,WIPO Case No. D2013-1304; and section 2.5.1 of the WIPO Overview 3.0.
Therefore, this Panel concludes that, with respect to the second limb, the Complainant successfully establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. By failing to file a response, the Respondent has not rebutted this prima facie case nor invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its "rights or legitimate interests" in its use of the disputed domain name.
Accordingly, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
This Panel is satisfied that the disputed domain name was registered and is being used by the Respondent in bad faith. Paragraph 4(b) of the Policy reads, in part, that bad faith is present where:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a productor service on the respondent's website or location.
On a preponderance of the evidence, it is likely that the Respondent knew of the Complainant's goodwill and reputation when the Respondent registered the disputed domain name. The evidence adduced persuasively demonstrates that the Respondent had consistently targeted the Complainant's G4S trademark, in particular, for the purpose of proposing delivery services for dangerous goods, or otherwise with the intention of impersonating for commercial gain or disrupting the Complainant and its business. This Panel finds that the Respondent's repeated attempts to circumvent the suspension of the website to which the disputed domain name resolves to, while failing to provide a response to these administrative proceedings, and taking into account the circumstances of the case, to be registration and use in bad faith. See generally Albemarle Corporation v. Marino Specogna,WIPO Case No. D2016-1960; and section 3.1 of the WIPO Overview 3.0.
In addition, based on the available evidence, this Panel is sufficiently persuaded that the Respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the Complainant's rights in its G4S trademark, through the registration and use of the disputed domain name.
Accordingly, this Panel finds that the Complainant has discharged his burden under paragraph 4(a)(iii) of the UDRP. 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, , be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Date: September 19, 2017
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