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 October 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2018, 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on November 23, 2018. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
With operations in over 100 countries and employing over 585,000 people worldwide, the Complainant is one of the largest security solutions providers in the world.
The Complainant owns a number of trademark registrations for the mark G4S, among others:
- United States (“US”) Trademark Registration No. 3,378,800, registered on February 5, 2008 for goods and services of Classes 9, 39 and 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (“Nice Classification”);
- International Trademark Registration (“IR”) No. 885,912, registered on October 11, 2005 for goods and services of Classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45 of the Nice Classification.
Since December 1, 1999, the Complainant owns the domain name which identifies its official website.
The disputed domain name was registered on October 31, 2017 and it resolves an active website where the Respondent is trying to impersonate the Complainant using its trademark G4S with the addition of the words “security company” beneath it. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its G4S trademark since it reproduces the trademark in its entirety and addition of generic terms “security”, “company” and “worldwide” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant submits that the Respondent has registered another domain name containing the G4S trademark in the past which shows that it knew of the Complainant’s mark and registered the disputed domain name with obvious intent to target the Complainant’s mark and its business.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely 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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that it holds registered rights in the trademark G4S, and for the purpose of this proceeding the Panel establishes that the Complainant’s US Trademark Registration No. 3,378,800 and IR No. 885,912 for the mark G4S satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the G4S mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the G4S trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0 “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
The disputed domain name fully incorporates the Complainant’s G4S trademark.
Elements in the disputed domain name other than the G4S trademark of the Complainant are dictionary, descriptive terms “security”, “company” and “worldwide”.
According to section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
According to section 1.11.1 of the WIPO Overview 3.0 “[t]he applicable Top Level Domain (ʻTLDʼ) in a domain name (e.g., ʻ.comʼ, ʻ.clubʼ, ʻ.nycʼ) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.”
The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” should be disregarded for the test of the first element.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name is confusingly similar to the G4S trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established prior rights in the trademark G4S.
The Complainant has never authorized the Respondent to use its G4S trademark in any way, and the Complainant’s use of and prior rights in the G4S trademark long precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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.”
The Complainant presented undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The reputed G4S trademark of the Complainant has no dictionary meaning; it’s been created by the Complainant and is highly distinctive for the corresponding services.
According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
However, the Respondent in this case did not incorporate the Complainant’s G4S trademark into the disputed domain name by coincidence; extensive evidence submitted by the Complainant prove that the Respondent obviously knew of the Complainant’ mark and has targeted it with unlawful intent.
Firstly, the website to which the disputed domain name resolves clearly and prominently displays the Complainant’s unique design variant of its G4S trademark.
Secondly, prior to registering the disputed domain name the Respondent was already involved in a dispute with the Complainant related to its G4S trademark.
The Respondent registered the domain name on March 2, 2017 against which the Complainant filed a complaint on July 26, 2017. On September 19, 2017 the UDRP panelist appointed in that case ruled in favor of the Complainant and ordered transfer of the domain name to the Complainant (See G4S Plc. v. Decrypter Cons,WIPO Case No. D2017-1442 ().
Shortly after, on October 31, 2017 the Respondent registered the disputed domain name and set up a replica of the website which was previously used on the domain name .
In the Panel’s opinion it is beyond doubt that the Respondent chose to register the disputed domain name that reproduces the widely-known G4S trademark of the Complainant with intent to unlawfully and blatantly exploit the reputation behind the G4S trademark without any authorization or rights to do so which is evidence of bad faith set out in paragraph 4(b)(iv) of the Policy.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Date: December 5, 2018
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