The Complainant is G4S Plc of London, United Kingdom of Great Britain and Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Softech International Co. of Kuwait City, Kuwait. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2018. On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. An informal email communication from the Respondent was received by the Center on October 28, 2018. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on November 20, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on November 29, 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 provider in the world.
The Complainant owns a number of registrations for the trademark G4S, among others:
- United States (“US”) Trademark Registration No. 3378800, 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. 885912, 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 has the domain name which identifies its official website.
The disputed domain name was registered on October 8, 2013 and was used to direct Internet users to a website allegedly offering security services in Kuwait under the name “Group Four Security Services Co.” 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 the addition of letters “s”, “k” and “w” 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’s intent is diversion of Internet users looking for the Complainant’s website to a website allegedly offering competing services in Kuwait, which constitute bad faith registration and use of the disputed domain name.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not submit a formal response to the Complaint. It indicated that it was unaware that the disputed domain name was similar to the one for G4S because its company’s full name was “Group for Security Group” and that it would take the necessary actions to cancel de disputed domain name and to no longer use it. 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. 3378800 and IR Trademark Registration No. 885912 for the word mark G4S satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has rights in the G4S trademark, 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.”
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 (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
The disputed domain name incorporates the Complainant’s G4S trademark in its entirety.
Elements in the disputed domain name that differ from the distinctive G4S trademark of the Complainant are letter “s”, “k” and “w”. The letter “s” in the disputed domain name meant to stand for “security”, while letters “k” and “w” stood for Kuwait, the country where the Respondent was allegedly offering services in direct competition to those of the Complainant.
The Complainant has been very active in Kuwait (where the Respondent is based) for more than 30 year and the Respondent’s use of letters “k” and “w” (which make the two letter ISO code as well as the country code Top Level Domain for Kuwait) in the disputed domain name does not prevent a finding of confusing similarity between the Complainant’s G4S trademark and the disputed domain name .
The generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” may be disregarded for the first element test.
On the basis of facts and circumstances 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 he 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 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 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 convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The G4S trademark of the Complainant has no dictionary meaning; it’s a term invented by the Complainant and therefore 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.
The Complainant’s G4S mark was long registered and used worldwide before registration of the disputed domain name, including Kuwait where the Respondent is based.
In view of the Panel the fact that the Respondent set up a website within the same industry as the Complainant and fully incorporated the Complainant’s G4S trademark in the disputed domain name indicates that the Respondent knew of the Complainant’s trademark registration at the time of registration of the disputed domain name and has done that with aim of creating confusion among Internet users as to the association with the Complainant’s G4S brand.
At the website under the disputed domain name the Respondent was offering services similar to or competing with those of the Complainant and in the Panel’s opinion the only plausible explanation for the Respondent’s choice to register the disputed domain name that fully incorporates the Complainant’s well reputed trademark was to exploit and benefit from the reputation behind the G4S trademark and business without any authorization or rights to do so.
Furthermore, at the time of rendering the decision the disputed domain name was inactive. However, given the reputation of the Complainant’s mark, failure of the Respondent to respond to the Complainant’s statements and implausibility of any good faith use of the disputed domain name the Panel finds bad faith registration and use under the doctrine of passive holding in accordance with section 3.3 of the WIPO Overview 3.0.
In view of the Panel, all the above discussed facts and circumstances support applicability of paragraph 4(b)(iv) of the Policy and 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 10, 2018
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