The Complainant is G4S Plc. of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by SafeNames Ltd., United Kingdom.
The Respondent is VMI of Grand Cayman,Cayman Islands, Overseas Territories of the United Kingdom. 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 November 1, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on December 4, 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. 4. Factual Background
The Complainant is a security services company with its headquarters in the United Kingdom. It provides security products and services in over 100 countries to a wide range of business sectors. Its revenue for the year 2016 was GBP 6.8 billion.
The Complainant has traded as G4S since 2004 and it has registered trade marks for G4S in many jurisdictions. These include, by way of example only, International Registration 885912 dated October 11, 2005 in multiple classes, including class 45 (security services). The Complainant also registered the domain name on December 1, 1999 and this resolves to its primary international website.
The Complainant has provided its services at a number of high profile events, including the London 2012 Olympics as well as the One Love benefit concert in Manchester, United Kingdom, in May 2017. It also has an active social media presence.
The disputed domain name was registered on November 13, 2012. As at April 2013, it pointed to a website containing pay-per-click links such as “Post Your Resume” as well as a banner advert: “Domain sale. Click here to buy now”.
As at November 1, 2018 the pay per click links on the website to which the disputed domain name resolves included “G4 Security”, “G4S Security” and “G4S Secure Solutions Jobs”. In small print at the foot of the webpage is a disclaimer asserting that “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues, please contact the domain owner directly…….”. The website also contains a small banner advert: “Domain sale. Click here to buy now!”.
As at November, 2018, the disputed domain name was being offered for sale on the Afternic website (Afternic being a domain name marketplace) for USD 1,339 and it was also being advertised for sale on Sedo, which is another domain name marketplace, for USD 1,359. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is confusingly similar to its G4S trade mark. In making the comparison between the mark and the disputed domain name, the suffix “.com” should be disregarded as it is merely a technical requirement for domain names. The remaining part of the disputed domain name incorporates the Complainant’s trade mark in its entirety and simply adds the words “secure” and “solution”. The addition of generic words such as these does not diminish the confusing similarity with the trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not registered a trade mark for either G4S or G4S SECURE SOLUTION, nor has it acquired any common law rights in these terms. It therefore does not hold rights to the disputed domain name.
The disputed domain name currently resolves to a pay-per-click webpage with advertising links to security services and security jobs. However, when, as is the case with the Respondent’s webpage, the links on the pay-per-click landing page are based on the trade mark value of the domain name, this practice constitutes abusive cybersquatting. “G4S” has no generic meaning and solely relates to the Complainant’s services. Accordingly, the Complainant’s mark is being used by the Respondent in an attempt to derive advantage from user confusion. The Respondent’s webpage therefore does not constitute a bona fide offering of goods and services.
The Respondent has never been commonly known by the disputed domain name. Furthermore, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Having established a prima facie case that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to put forward evidence to the contrary.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant’s G4S trade mark has been active for over ten years and predates the registration of the disputed domain name by seven years. The Complainant is well-known in the United Kingdom, the United States of America and elsewhere. It is more likely than not that the Respondent knew of the Complainant’s goodwill and reputation at the time of registration of the disputed domain name. When domain names are composed of trade marks plus qualifying parts of speech that suggest an association with a complainant, this constitutes prima facie evidence of an abusive registration, as it implicitly indicates knowledge of the targeted trade mark (see Gateway, Inc. v. Bellgr, Inc.,WIPO Case No. D2000-0129).
The Respondent did not respond to a cease and desist letter sent to its proxy service on August 24, 2018, nor to a reminder sent on September 3, 2018. This is further evidence that the Respondent registered and is using the disputed domain name in bad faith. Moreover, the fact that the disputed domain name has been offered for sale at a “buy now” price of USD 1,359 shows that the Respondent acquired the disputed domain name with an intention to sell it back for valuable consideration in excess of its out-of-pocket costs. Furthermore, as soon as April 2013, the Respondent put the disputed domain name for sale on its website along with pay-per-click links, thereby evidencing an intent to free ride on the reputation of the Complainant. This points to bad faith use under paragraph 4(b)(i) of the Policy.
The circumstance pointing to bad faith registration and use which is set out at paragraph 4(b)(iv) of the Policy is also present. Domain names which incorporate trade marks and common words “that strongly lead an average user back to a Complainant’s trade mark” have been found to violate this paragraph of the Policy. The Respondent uses common words related to the Complainant’s business which cause for Internet users a likelihood of confusion with the Complainant’s trade mark. Only when users access the Respondent’s website will they realise that the disputed domain name is not affiliated with the Complainant’s G4S trade mark.
Irrespective of whether the Respondent is in total control of the content which features on the webpage to which the disputed domain name resolves, it is still responsible for it. A “not me” defence is not accepted under the Policy (see Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315). Accordingly, the Respondent has intentionally attempted to attract Internet users to its website by creating confusion among users, as the disputed domain name incorporates the Complainant’s mark, even though the Respondent is neither affiliated, to nor endorsed by, the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 Complainant has provided evidence of its trade mark registrations for G4S; see the details of one of its registrations set out above. These establish its rights in the mark.
For the purpose of considering whether the disputed domain name is identical or confusingly similar to G4S the generic Top-Level Domain (“gTLD”) “.com” is disregarded, as this is a technical requirement of registration. The disputed domain name accordingly comprises the Complainant’s trade mark in full together with the additional words “secure” and “solution”. These words, particularly in combination, will be perceived by those Internet users aware of the Complainant’s provision of security-related services, as related to those services. The additional components of the disputed domain name do not serve to render it dissimilar to the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark…the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The disputed domain name incorporates the entirety of the Complainant’s G4S trade mark and the Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it is commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Dealing, first, with paragraph 4(c)(i) of the Policy, whether the use to which the disputed domain name is being put might amount to a bona fide offering of goods and services is considered at section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This explains that “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The inclusion on the Respondent’s website, of links which would clearly be associated with the services provided by the Complainant, (for example “G4S Security” and “G4S Secure Solutions Jobs”) is apt to redirect some Internet users who were seeking the Complainant, such as job seekers looking for details of vacancies at the Complainant, to the websites to which the links resolve. The Respondent’s website does not therefore comprise a bona fide offering of goods and services.
Paragraph 4(c)(ii) of the Policy is inapplicable; there is nothing to suggest that the Respondent has been commonly known by the disputed domain name. Paragraph 4(c)(iii) is also inapplicable; the use of the disputed domain name to point to a directory page containing pay-per-click links is plainly not noncommercial in character.
The Complainant having made out (at least) 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 relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint and has not therefore satisfied this burden.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has established that its G4S trade mark is well-known in the field of security services and is inherently distinctive. The disputed domain name contains the Complainant’s G4S trade mark in full and the added words, “secure solution”, are descriptive of the services provided by the Complainant. The incorporation within the disputed domain name of the Complainant’s mark and words, “secure solution”, which would naturally be associated with the Complainant’s services, point clearly to an awareness by the Respondent of the Complainant and its G4S trade mark as at the date of registration of the disputed domain name. Within, at most, a few months of the date of registration, the website to which the disputed domain name resolved, was hosting pay-per-click links in the form described earlier together with a banner advertising the disputed domain name for sale. In these circumstances it is reasonable to assume that the disputed domain name to which it was put shortly following registration.
Whilst the use of a domain name to point to parking pages hosting pay-per-click sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The facts point to the Respondent having registered the disputed domain name in circumstances similar to those outlined in Yahoo! Inc. v. Hildegard Gruener (supra). Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The purported disclaimer at the foot of the Respondent’s website does not change the position; as explained at section 3.5 of the WIPO Overview 3.0; “Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests)”.
The Panel accordingly finds that the disputed domain name was both registered and is being used in bad faith. It is not therefore necessary to consider the Complainant’s additional submission that the offer for sale of the disputed domain name falls within the circumstance of bad faith registration and use set out at paragraph 4(b)(i) of the Policy. 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.
Antony Gold
Sole Panelist
Date: December 17, 2018
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