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 Luo Ren Cai (罗仁才) of Shanghai, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English 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 names. On July 28, 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. On July 31, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of proceeding on August 1, 2017. The Respondent requested that Chinese be the language of the proceeding on the same day.
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 in English and Chinese of the Complaint, and the proceeding commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. On August 7, 2017, the Respondent sent a Chinese language email communication regarding the language of the proceeding to the Center. The Response was filed in Chinese with the Center on August 26, 2017. The Complainant submitted by email an unsolicited reply to the Response in English on August 30, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 8, 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 A. Complainant
The Complainant is a company incorporated in the United Kingdom and is the world's largest security solutions provider, with operations in over 100 countries and over 585,000 employees worldwide. The Complainant is listed on the FTSE Index and on the Copenhagen Stock Exchange.
The Complainant has continuously since 2004 been providing its security solutions services worldwide (including in China) under the trade mark G4S (the "Trade Mark"). The Complainant is the owner of numerous national and international registrations worldwide for the Trade Mark, the earliest dating from June 3, 2005. The Complainant is also the owner of several domain names comprising the Trade Mark, including (registered under the ccTLD for China, ".cn"). B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Names
The disputed domain names were both registered on the same date, March 7, 2017. D. Passive use of the Disputed Domain Names
The disputed domain names have not been used. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith. B. Respondent
The Respondent contends that the disputed domain names are not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in the disputed domain names, and the disputed domain names have not been registered and used in bad faith. 6. Discussion and Findings 6.1 Supplemental Filing
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
The Complainant's reply submissions address specifically the Respondent's submissions in the Response:
(i) That he set up his own security solutions company in China called C4SS (China for Security Solutions Co., Ltd) prior to registration of the disputed domain names;
(ii) That, after receipt of the Complaint, he conducted his own investigations regarding the presence of the Complainant's business conducted under the Trade Mark in China, and that the results of his investigations indicated that the Complainant's presence in China was small; and
(iii) That he asked a lot of people in the security services industry, and 99.9% of them have not heard of G4S.
In reply to the submissions in the Response, the Complainant seeks to adduce a print-out from the Respondent's LinkedIn page, which states that he worked for the Complainant's Shanghai office from December 2012 until April 2015 as a "Security Operation Director".
In all the circumstances, the Panel determines that it will admit the Complainant's supplemental filing. 6.2 Language of the Proceeding
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreements.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for the following reasons:
(i) The Respondent has a working knowledge of English as the disputed domain names are English language domain names; and
(ii) Requiring the Complainant to translate the Complainant would add unnecessary cost and cause delay in resolution of the proceeding.
The Respondent's language request was filed with the Center in English on August 1, 2017.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(i) The Respondent is a bilingual lawyer and can understand English well, but, as the process of registering the disputed domain names took place in China, the evidence is Chinese, and the likely witnesses can only read Chinese, the language of the proceeding should be in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreements, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel notes that the Respondent is bilingual and can understand English well. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filing of the Complaint in English;
(ii) It will accept the filing of the Response in Chinese; and
(iii) It will render its decision in English. 6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names comprise the Trade Mark in its entirety and are therefore, excluding the respective gTLDs ".market" and ".website" (in accordance with previous UDRP decisions), identical to the Trade Mark.
The Respondent asserts that trade mark rights are different to domain name rights, and the disputed domain names were legally registered, having been available for sale on the Internet for quite some time. These submissions are misconceived and inapposite to the first element of the Policy.
Accordingly, the first element under paragraph 4(a) of the Policy has been made out. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, 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; or
(ii) 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 trade mark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has rights in the Trade Mark which precede the Respondent's registration of the disputed domain names. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have not been used.
The Respondent asserts that he registered the disputed domain names to be used in respect of his security solutions business, C4SS (China for Security Solutions Co., Ltd), having found out that the domain name (a domain name the Panel notes is in fact registered by the Complainant) was unavailable.
The Respondent has not however adduced any evidence to demonstrate any trade mark rights (whether by use or registration). There is no evidence, other than bare assertion, that the Respondent is in fact conducting any business at all, whether under the names C4SS (China for Security Solutions Co., Ltd), or otherwise.
Furthermore, even if any such business were in existence, there is no legitimate reason, in all the circumstances, for the Respondent to seek to register the disputed domain names, which are identical to the Trade Mark, instead of, far more appropriately, the domain names and .
According to the Response, the Respondent intends to establish another security service company to serve Chinese companies and aim to make it a global company in the future, and intends to name it as "Zhong Qiao International Security Service Company" and register domain names incorporating "g4s", which means "global for Security" for the new company.
The Panel further notes that, if the Respondent's security services business does exist, its name is confusingly similar to the Trade Mark. This fact, coupled with the Respondent's previous employment in the Shanghai office of the Complainant, further demonstrates that the Respondent clearly has no rights or legitimate interests in the disputed domain names.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Complainant has made a prima facie showing and that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), the Panel has no hesitation in concluding the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant's Trade Mark at the time of registration of the disputed domain names.
The Panel considers the following further reasons demonstrate incontrovertibly that bad faith has been made out:
(i) The fact the Respondent deliberately chose to withhold from the Panel the fact that, prior to his registration of the disputed domain names, he was employed by the Shanghai office of the Complainant for a period of 2 years and 5 months;
(ii) In light of his employment history, the Respondent's disingenuous assertions regarding his "investigations"; and
(iii) The Respondent's disingenuous and entirely incredible assertion that 99.9% of persons in the security services industry in China have never heard of the Complainant.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used 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 names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: September 22, 2017
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