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 Patrick Abbey, G4S of Antrim, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2017.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on September 19, 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 is the registered owner of the trademark G4S, which is well-known for a multinational company with operations in 100 countries (six continents) employing over 585,000 people worldwide providing security products, services and solutions. The Complainant segments its business into two main areas; secure solutions which include services for commercial and governmental organizations and cash solutions, which include the outsourcing of cash cycle management for banks, financial institutions and retailers. The Complainant’s sectors vary from financial institutions, transports and logistics, leisure and tourism, government, private energy and utilities, and mining and metals.
The Complainant is a British security services company initially founded in 1901, but it has been trading as “G4S” since 2004 when the Danish company “4 Flack” merged with “Securicor”.
The Complainant has been used the G4S trademark since 2004, and has been registered since 2005. The Complainant uses the trademark G4S as part of the company logo to distinguish their services from competitors. The Complainant, its affiliates, subsidiaries and associated companies own trademarks within numerous jurisdictions including but not limited to the following trademarks:
G4S International Registration (Registration No. 885912, registered in 2005), G4S European Union (Registration No. 004645297, registered in 2007), G4S United Kingdom (Registration No. UK2391942, registered in 2006).
The Complainant registered the domain name on October 1, 1999 and has been using it since that date.
The Complainant’s website is also available in multiple languages. The Complainant has further registered their trademark in country code Top Level Domains (“ccTLD”), which enables users to access the Complainant’s services, using their local TLD. A non-exhaustive list of the Complainant’s ccTLD’s: registered on March 1, 2005, registered on February 25, 2010, registered on January 27, 2003, registered on March 2, 2005, registered on November 17, 2004.
The Complainant can be noticed as media-active (announcements concerning business affairs, awards, active in high profile events etc.) involved in different media types such as social media platforms (Facebook, Twitter, LinkedIn).
Besides being a well-known brand name, the public limited company is listed on the on the FTSE Index and Copenhagen Stock Exchange with a share price of 27.33 DKK as on the July 10, 2017.
The Respondent registered the Disputed Domain Name on May 11, 2017 and used it for email purposes, in order to obtain confidential information from the general public, such as postal addresses and telephone numbers, using the fake email address “customerservices@”. As a result of a takedown notice sent by the Complainant’s legal representative, the Disputed Domain Name now resolves to an error message. 5. Parties’ Contentions A. Complainant
The Complainant alleges that:
a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s mark because:
i) The Complainant obtains several trademarks for the “G4S” term, which predate the registration of and are registered in the European Union, where the Respondent claims to be based in accordance with the information of WhoIs. The Complainant holds common law rights, supported by the popularity of the G4S trademark. The distinctive nature of the Complainant’s trademark has been acknowledged in previous UDRP cases such as G4S Plc v. Noman Burki,WIPO Case No. D2016-1383.
ii) The Disputed Domain Name features the term “G4S” and therefore is confusingly similar to the G4S trademark. The mere addition of the generic word “world” does not distinguish the Disputed Domain Name from the Complainant’s G4S trademark. See Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2000-1406.
iii) The Complainant requests that the beginning of the URL and the suffix “.com” are irrelevant when comparing the Disputed Domain Name with that of the Complainant’s G4S trademark as applied in previous UDRP decisions.
b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name because:
i) The Complainant argues that the Disputed Domain Name was initially used for email purposes, in order to obtain confidential information from the general public, such as postal addresses and telephone numbers, using the fake email address “customerservices@”. The Complainant submits that it currently resolves to an error page operated by “cPanel, Inc.”, as a result of a takedown notice sent by the Complainant’s legal representative. The Complainant avers that such use cannot amount to a bona fide offering of goods and/or services, due to the fraudulent intent by the Respondent, which is in direct violation of acceptable domain use.
Therefore, the Respondent cannot come within this exception of the Policy.
ii) Based on the publicly available WhoIs information, the Complainant is listed as the “Registrant Organization”, whereas the Respondent is not known, nor has he ever been known as “G4S”. To the best knowledge of the Complainant the Respondent has not received any license, authorization, or consent – express or implied – to use the G4S trademark in a domain name or in any other manner, either at the time when the Respondent registered and began using the Disputed Domain Name, or at any other time since. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the latter has been registered and used for the purpose of phishing. The Complainant therefore concludes that the Respondent’s choice in registering a domain name which features the Complainant’s company name and trademark, relies on the intention to pass off as the Complainant in order to facilitate their phishing scheme. This conclusion can be drawn in reference to the previous UDRP case Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,WIPO Case No. D2000-1244 (“merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”). Therefore, the exception under Policy, Paragraph 4(c) does not apply.
iii) The Complainant is of the opinion that the burden will shift to the Respondent to put forward evidence that the Respondent does have rights and legitimate interests in the Disputed Domain Name.
c) The Respondent has registered and is using the Disputed Domain Name in bad faith because:
i) The Respondent both registered and used the Disputed Domain Name in bad faith. He had the knowledge of the Complainant’s rights in the G4S trademark.
ii) Any individual who has access to the Internet can find the G4S trademarks on the Internet. The search would have revealed the Complainant’s G4S trademark. Due to the post-dated registration of many of the Complainant’s trademarks, the acclaimed reputation of the “G4S” brand worldwide, the Respondent would have known or would have at least been aware of the G4S trademark. Underlined by All Saints Retail Limited v. Wang Ya Ya,WIPO Case No. D2016-1809.
iii) The Respondent is a “faux registrant” due to fact that the “Registrant Organization” incorrectly lists “G4S” as the registered owner of the Disputed Domain Name, as the Complainant has no control or association with the Disputed Domain Name. As a conclusion the Respondent’s intent is to pass off and damage the Complainant’s goodwill.
iv) The Disputed Domain Name currently resolves to an inactive website. This also reveals bad faith use.
v) The Disputed Domain Name has been used for the purpose of sending phishing emails to the general public with the intention of obtaining personal information. Phishing is a direct violation of the Policy as applied in previous UDRP disputes such as Grupo Financiero Inbursa, S.A. de C.V. v Inbuirsa,WIPO Case No. D2006-0614.
vi) Furthermore, the Complainant alleges that the Disputed Domain Name fully incorporates the Complainant’s trademark with the addition of the word “world”. The Complainant submits that the use of the word “world” is likely to refer to the Complainant’s worldwide presence in the security market. As such, the Respondent is intending to mislead users into thinking that they are the Complainant, when in actual fact, the Disputed Domain Name resolves to a scam website operated by the Respondent, which is in violation of Policy, paragraph 4(b)(iii), that: “The Respondent has registered the domain name primarily for the purpose of disrupting a competitor”. Regarding to previous the Respondent can be interpreted as a “competitor” as required in paragraph (4)(c)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 trademark or service mark in which the Complainant has rights;
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. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark.
The distinctive nature of the G4S trademark has been acknowledged in previous UDRP dispute G4S Plc v. Noman Burki,WIPO Case No. D2016-1383. The Disputed Domain Name contains sufficient similarities to the Complainant’s trademark G4S. The Complainant’s trademark is incorporated in its entirety in the Disputed Domain Name. The Respondent just added the dictionary term “world” to the G4S mark in the Disputed Domain Name, which does not avoid their confusing similarity (see Dixons Group Plc v. Mr Abu Abdullaah,WIPO Case No. D2000-1406).
The prefix of the URL and the suffix “.com” do not have any indicating relevance according to the comparison (see The Forward Association, Inc. v Enterprises Unlimited, supra).
Given the foregoing, the Panel finds that the Complainant has established the first element of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent has not been authorized by the Complainant to use its G4S mark in a domain name or otherwise.
Although a Complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent (see Altria Group, Inc. v. Steven Company,WIPO Case No. D2010-1762).
Accordingly, the Complainant needs first to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. “Upon such a showing, the burden [of production] shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names.” See Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult,WIPO Case No. D2014-1819.
In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
This finding is, inter alia, based on the following, non-disputed, circumstances:
1) The Respondent does not appear to have registered any trademark in any form and is not commonly known by the Disputed Domain Name;
2) The Complainant has asserted that the Respondent has no relationship or affiliation with the Complainant and has never authorized or licensed the Respondent to use its trademark;
3) The Respondent’s use of the Disputed Domain Name is not a bona fide offering of goods or services and does not constitute any legitimate noncommercial or fair use.
The Disputed Domain Name has been used for phishing purposes before the takedown notice of the Complainant. Currently the Disputed Domain Name leads to an error page. For claiming the use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, the Respondent has to support his contention by relevant pre-complaint evidence. Here the Respondent did not respond at all. The previous use of the Disputed Domain for phishing purposes cannot amount to a bona fide offering of goods and/or services, due to the fraudulent intent by the Respondent, which is in direct violation of acceptable domain name use, as seen in prior disputes.
The Respondent did not reply to the Complainant’s contentions in order to demonstrate any rights or legitimate interests in the Disputed Domain Name. Therefore the only plausible reason, in the view of the Panel, for the Respondent to register the Disputed Domain Name was to take advantage of the Complainant’s right to the G4S trademark and gain financial profit.
The Panel finds that the second element of paragraph 4(a) of the Policy has been established regarding the Disputed Domain Name. C. Registered and Used in Bad Faith
Regarding the Disputed Domain Name, the Panel concludes that the requirements of paragraph 4(a)(iv) of the Policy have been made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Name have been proven.
The Complainant is required to prove that the Disputed Domain Name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a domain name:
“i) Circumstances indicating that you [respondent] have registered or you [respondent] 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 competitors of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii) You [respondent] 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 [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitors; or
iv) By using the domain name, you [respondent] 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 your location.”
The Panel finds that the circumstance set out in paragraph 4(b)(iii) is fulfilled here. In the Panel’s view there is circumstantial evidence that leads to the finding that the Respondent acquired the Disputed Domain Name primarily for the purpose of attracting Internet users to the Respondent’s website. By using the generic word “world”, the Respondent’s intent appears to be to mislead users to the Respondent’s website with fraudulent intent. Particularly with regard to the fact that the Disputed Domain Name has been used for the purpose of sending phishing emails to the general public with the intention of obtaining personal information. See Grupo Financiero Inbursa, S.A. de C.V. v Inbuirsa,WIPO Case No. D2006-0614.
Hence Internet users are likely to refer the Disputed Domain Name to the well-known trademark G4S which likely leads to confusion of the Disputed Domain Name with the Respondent’s fraudulent intent.
The Panel, in the view of all the circumstances of this case, including the fact that the Complainant is an international well-known corporation along with its valid trademarks and that no response to the Complaint has been filed, concludes that paragraph 4(a)(iii) is fulfilled and that the Respondent has registered and used the Disputed Domain Name in bad faith. 7. Decision
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.
Maxim H. Waldbaum
Sole Panelist
Date: October 3, 2017
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