ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION G4S Limited v. Domain Admin, Hush Whois Protection Ltd. Case No. D2022-4031 1. The Parties The Complainant is G4S Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Domain Admin, Hush Whois Protection Ltd., Seychelles. 2. The Domain Name and Registrar The disputed domain name is registered with Key-Systems GmbH (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2022. On October 27, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2022, 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 (On behalf of wwwg4s.com Owner, c/o whoisproxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 3, 2022. 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 the Respondent of the Complaint, and the proceedings commenced on November 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2022. The Center appointed Ganna Prokhorova as the sole panelist in this matter on December 1, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, G4S Limited, is a multinational private security company headquartered in London, United Kingdom. The Complainant has exclusive rights in the G4S marks worldwide, including: - International Registration No. 885912, G4S, in respect of a wide range of goods and services in International Classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45, which was registered on October 11, 2005; - European Union Trade Mark No. 004613378, G4S, in respect of goods and services in International Classes 9, 39, and 45, which was registered on March 14, 2007; - United States of America Trademark No. 3,378,800, G4S, in respect of a range of goods and services in International Classes 1, 6, 16, 35, 36, 37, 38, 41, 42, and 44, which was registered on February 5, 2008. The Complainant uses its main domain name registered on December 1, 1999 to market its global offerings. This website is available in multiple languages and includes country-specific sites, which enable the Complainant to tailor its offerings to Internet users based in different territories. The disputed domain name was registered on August 2, 2010 and resolves to a parking page which consisted of pay-per-click ("PPC") links. 5. Parties' Contentions A. Complainant The Complainant maintains that it provides security and facility services in around 80 countries and that it has been operating under the name and mark G4S since 2004. Based on such use, and the Complainant's several registrations for the G4S mark, the Complainant claims to have developed widespread consumer goodwill and strong rights in G4S. In essence, the Complainant argues as follows: On the first element of the Policy, the Complainant indicates that the disputed domain name reproduces identically the trademark G4S, preceded by the prefix "www", which stands for "World Wide Web". On the second element of the Policy, the Complainant indicates that the Respondent does not have rights or legitimate interests in the disputed domain name. On the third and final element of the Policy, the arguments of the Complainant are twofold: Regarding the registration of the disputed domain name in bad faith, the Complainant claims that the Respondent did not choose the disputed domain name by chance, as it was registered with the knowledge of the Complainant's activities, reputation and trademarks, hoping that Internet users would type the official website address "www.g4s.com" without the dot after the prefix "www". Regarding the use of the disputed domain name in bad faith, the Complainant argues in essence that, with the operation of a PPC scheme, the Respondent attempts to attract, for commercial gain, Internet users to its page 3 website, by creating a likelihood of confusion with the Complainant's trademarks. The Complainant also draws attention of the Panel that the Respondent has engaged in a pattern of abusive conduct by registering other domain names which encompass the marks (either in full or as typosquatting variations) of established third-party brands. The Respondent has been a respondent in more than 20 prior UDRP cases. The Complainant request the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark 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. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. The Panel also draws its attention that the time between the registration of the disputed domain name in 2010 and the filing of the Complaint in 2022 is obviously a significant period of time. In this respect, the Panel would like to note that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Prior UDRP panels have reasonably noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.17. Therefore, this Panel will not use any concepts such as laches or its equivalent in this case. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. The Complainant has established rights over the G4S trademark, duly registered in several jurisdictions across the world, which precede the registration of the disputed domain name. Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. It is generally accepted that the test of confusing similarity is reasonably straightforward and functions primarily as a standing requirement. See section 1.7 of the WIPO Overview 3.0: "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." page 4 The disputed domain name reproduces identically the trademarks G4S of the Complainant, preceded by the sequence "www". As configured in the disputed domain name, the trademark G4S is recognizable immediately. The Panel considers therefore that the disputed domain name is confusingly similar to the trademarks of the Complainant. See L. Perrigo Company, and Perrigo Pharma International DAC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2022-2450. Respectively, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its G4S mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name, whereas the Complainant has prior rights in the trademarks which precede the Respondent's registration of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). Accordingly, and based on the facts and arguments set out herein, and absent specific allegations of a legitimate interest by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. As explained in the Complaint, the Complainant is a multinational private security company operating in over 80 countries and employing over 800,000 people worldwide. It asserts it is one of the largest security solutions provider in the world. The term "G4S" does not have any additional meaning, except to identify the Complainant. Thus, it is the view of the Panel that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name. Furthermore, the disputed domain name is composed of a common typosquatting variation of the Complainant's main "www.g4s.com" website. UDRP panels have consistently found that typosquatting is inherently parasitic and of itself evidence of bad faith. The Respondent's selection of the string "wwwg4s" has been with the intent to capitalize on Internet users inadvertently mistyping the Complainant's main domain name address. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. As regards bad faith use, the Panel finds that the disputed domain name resolves to a website containing PPC links to third-party sites. The Panel is of the view that 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. In accordance with paragraph 4(b)(iv) of the Policy, this shall be evidence of both the registration and use in bad faith of the disputed domain name for the purposes as set out in paragraph 4(a)(iii) of the Policy. page 5 The Complainant submits that the Respondent has engaged in a pattern of abusive conduct by registering other domain names which encompass the marks (either in full or as typosquatting variations) of established third-party brands. The Respondent has been a respondent in more than 20 prior UDRP cases. The Complainant notes, in particular, that the Respondent has targeted its G4S brand in an earlier decision (see G4S Plc v. Domain Admin, Hush Whois Protection Ltd., WIPO Case No. D2018-2551). Given the evidence elucidated above, based on the WIPO Overview 3.0, section 3.1.2, the Panel considers that the Respondent has engaged in a pattern of abusive conduct for the purposes of satisfying paragraph 4(b)(ii) of the Policy. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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. /Ganna Prokhorova/ Ganna Prokhorova Sole Panelist Date: December 14, 2022
Full & Egal Universal Law Academy