The Complainant is G4S Plc, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2020, 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 June 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2020. The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 31, 2020. 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 British security provider company, initially founded in 1901, which has been trading under its current name G4S since 2004, when Group 4 Falck and Securicor merged. The Complainant’s business includes transportation and logistics, leisure and tourism, private energy and utilities and mining and metals. The Complainant segments its business into two main areas: Secure Solutions, which includes services for commercial and governmental organizations, and Cash Solutions, which includes the outsourcing of cash cycle management for banks, financial institutions and retailers. The Complainant, its affiliates, subsidiaries and associated companies own trademarks G4S within numerous jurisdictions, including the following: - International Trademark Registration G4S No. 885912, registered on October 11, 2005 in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, 45; - United Kingdom Trademark Registration G4S No. UK00002391942, registered on March 17, 2006 in classes 6, 9, 35, 37, 38, 39, 45; - European Union Trade Mark Registration G4S No. 004645297, registered on May 15, 2007 in classes 9, 39, 45; - United States Trademark Registration G4S No. 3378800, registered on February 5, 2008 in classes 9, 39, 45 and - European Union Trade Mark Registration G4S No. 015263064, registered on September 20, 2016 in classes 6, 36, 37. The Complainant registered its official website “www.g4s.com” on December 1, 1999, which allows users to view the Complainant’s various sectors and services. The Complainant’s website is also available in many languages and has several country sites, for instance “www.g4s.com/fr” for France. The Complainant has also included its registered trademark G4S in several country code Top-Level-Domains (“ccTLDs”) such as: “.cn”, “.co”, “.cz”, “.in” and “.us”. The Complainant has established a large social media presence and uses the trademark G4S to promote its services through Facebook, LinkedIn, Twitter, Instagram and YouTube. The disputed domain name The Complainant, who is one of the world’s largest security providers, has over 500,000 employees and operates in more than 100 countries across the world. The Complainant has acquired widespread consumer goodwill, having operated for over a century and under the G4S trademark for the past 15 years. In essence, the Complainant claims that the disputed domain name is confusingly similar to the trademark G4S in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. More specifically, the Respondent has no connection nor affiliation with the Complainant who has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including the above-mentioned trademark. To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for G4S or G4SL and does not hold any unregistered rights in the terms “G4S” or “G4SL”. The Respondent is not known, nor has ever been known, as “G4S” nor “G4SL”. The G4S trademark is distinctive and not used in commerce other than by the Complainant. It should be noted that the content previously displayed at the disputed domain name, prior to the Registrar’s takedown on May 19, 2020, is in many areas identical to content previously advertised at the Complainant-controlled domain The Complainant sent a takedown request to the Registrar on the May 19, 2020, which was successful, and a cease and desist letter to the Respondent on May 21, 2020 with a follow-up notice on May 29, 2020, both of which remained unanswered. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the G4S trademark. As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Panel considers that the disputed domain name is confusingly similar with the Complainant’s G4S trademark. The disputed domain name contains the G4S trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark”. See also, e.g., Oki Data Americas, Inc. v. Asdinc.com,WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”). The Panel considers that the single letter “l” added to the Complainant’s distinctive trademark G4S in the disputed domain name is insufficient to avoid a finding of confusing similarity under the first element. In addition, for the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” gTLD included in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar with the G4S trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses: (i) before any notice to it of the dispute, the respondent’s use of, or 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is the official site of the Complainant. As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” As indicated in Section 6.A above, the disputed domain name is confusingly similar with the G4S trademark. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark G4S mentioned in Section 4 above (Factual Background) when it registered the disputed domain name on August 26, 2019. The disputed domain name was registered many years after the Complainant had registered and used its trademark G4S and its domain names that include it, particularly Previous UDRP panels have recognized the value of the G4S trademark and its association with the Complainant. For instance, in G4S Plc v. Norman Burki,WIPO Case No. D2016-1383, the panel stated that “G4S is inherently distinctive and is likely to have acquired further distinctive character through the use of the of the Complainant’s G4S by the Complainant”. The trademark G4S is widely known and enjoys good reputation. Noting the previous use the disputed domain name which was mimicking the Complainant’s official website, the Respondent when registering the disputed domain name on August 26, 2019 was aware of the Complainant and was targeting the Complainant and its trademark by adding the sole letter “l” to the distinctive trademark G4S of the Complainant with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademarks for its own monetary benefit. Furthermore, the fact that the Registrar accepted to take down the site to which the disputed domain name relates, as result of the request made by the Complainant on May 19, 2020, constitutes further evidence that the disputed domain name was being used fraudulently. Also, the failure of the Respondent to answer the Complainant’s cease and desist letter of May 21, 2020 and follow up notice on May 29, 2020 allows the Panel to make an inference of bad faith (see Facebook, Inc. and Instagram, LLC v. CW /cw,cw,WIPO Case No. D2018-1159). The Panel finds that the Respondent has registered and is using the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 Miguel B. O’Farrell
Sole Panelist
Date: August 9, 2020
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