Complainant is G4S Plc, United Kingdom, represented by SafeNames Ltd., United Kingdom.
Respondent is Domain Administrator, PrivacyGuardian.org, United States of America (“United States”) / Treutel-Hermiston, Virginia McDermott, Nicaragua.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 4, 2021.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 2, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on November 10, 2021. 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 BackgroundComplainant is G4S Plc, a British company that offers security services for 85 countries, generating over 50,000 work posts for employees worldwide. Complainant is the largest security solutions provider in the world, operating in a variety of sectors, such as transports and logistics, leisure and tourism, government, private energy and utilities, and courier services.
Complainant has acquired goodwill by virtue of more than a century of widespread use, of which 15 years under the name “g4s”, providing its services in many notorious events, such as the London 2012 Olympics and the One Love Manchester benefit concert in May 2017.
Complainant owns a wide portfolio of registered trademarks for the sign G4S in a variety of jurisdictions, including the European Union, the United Kingdom, and the United States.
Below are some examples of Complainant’s trademark registrations:
Registration No.
Trademark
Jurisdictions
International Classes
Date of Registration
885912
G4S
International registration
1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45
October 11, 2005
766792
G4S
Benelux
1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45
June 3, 2005
004645297
European Union
9, 39, and 45
May 15, 2007
UK2391942
United Kingdom
6, 9, 35, 37, 38, 39, and 45
March 17, 2006
015263064
G4S
European Union
6, 36, and 37
September 20, 2016
3378800
G4S
United States
9, 39, and 45
February 5, .2008
3378798
United States
9, 39, and 45
February 5, 2008
Complainant’s official domain name
Complainant submits that it enjoys a worldwide reputation built around the distinctive trademark G4S, as previously recognized in several UDRP decisions.
Complainant pleads that the disputed domain name
Therefore, Complainant alleges that the disputed domain name would be clearly intended to imitate Complainant’s business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy, and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that, as far as it is aware, Respondent does not have any rights or legitimate interests in respect of the trademarks G4S or G4S COURIER, nor is widely known by the disputed domain name, and Respondent has not been authorized or licensed to use such trademark as a domain name. In this sense, Complainant states that there would be no plausible reason for the registration and use of the disputed domain name by Respondent other than to take advantage of the goodwill and valuable reputation attached to the trademark G4S.
This way, Complainant states that no bona fide or legitimate use of the disputed domain name could be reasonably claimed by Respondent, so paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.
At last, Complainant states that the disputed domain name
In this regard, Complainant affirms that it is very likely that Respondent was aware of Complainant’s good reputation worldwide. This is because Complainant’s trademark rights to the sign G4S have been active for over 15 years, while the disputed domain name was registered only on July 31, 2021. Furthermore, Complainant also operates courier services, which Respondent could not ignore due to its choice of registering the disputed domain name containing the word “courier” specifically in association to Complainant’s services.
Complainant also notes that the disputed domain name resolves to an active website where Respondent impersonates Complainant by using its logo with the mention “courier services”. This fact would demonstrate that Respondent uses Complainant’s good reputation to attract and scam Internet users by making them believe that the website at the disputed domain name is endorsed or affiliated to Complainant.
At last, Complainant affirms that Respondent chose to ignore a cease-and-desist letter sent by Complainant’s representatives on August 17, 2021, which would infer a bad faith behavior too.
Therefore, according to Complainant, Respondent both registered and is using the disputed domain name in bad faith, so paragraph 4(a)(iii) and 4(b) of the Policy, and paragraph (b)(ix)(3) of the Rules would also be fulfilled.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.
A. Identical or Confusingly SimilarComplainant has duly proven that it owns prior trademark rights over the sign G4S, which is registered in many jurisdictions, and that the disputed domain name
The Panel finds that adding the term “courier” to the trademark G4S in the disputed domain name does not avoid a finding of confusing similarity with Complainant’s trademark G4S.
Thus, the Panel finds that the disputed domain name
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile 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 relevant evidence demonstrating rights or 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.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
Firstly, the Panel finds that evidence brought by Complainant were sufficient to demonstrate that Respondent was aware of Complainant’s rights to the trademark G4S at the time of registration of the disputed domain name, especially the following: (i) G4S is a well-known trademark and enjoys an international reputation, as already recognized by previous UDPR panels; (ii) the disputed domain name was registered by Respondent on July 31, 2021, many years after the registration of Complainant’s official domain name
In addition to the above, the Panel believes that fact that the disputed domain name resolves to a website which reproduces Complainant’s logo and the aesthetics of Complainant’s official website indicates that Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark. According to Paragraph 4(b)(iv) of the Policy, this is an evidence of registration and use in bad faith.
Finally, the Panel notes that Respondent did not present a response to Complainant’s cease-and-desist letter, nor have presented its contentions to this Complaint, which also indicates a use and registration in bad faith of the disputed domain name (see Facebook, Inc. and Instagram, LLC v. C W / c w, c w,WIPO Case No. D2018-1159).
Given the above-mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Gabriel F. Leonardos
Sole Panelist
Date: November 24, 2021