ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION G4S Limited v. Joseph Akubueze Case No. D2023-1661 1. The Parties The Complainant is G4S Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Joseph Akubueze, Nigeria. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2023. On April 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 24, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2023, 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 April 28, 2023. 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 May 5, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2023. The Respondent sent informal communications to the Center on May 8, May 9, and June 13, 2023. The Respondent did not submit any formal response. Accordingly, the Center notified the parties that it would proceed to panel appointment on June 12, 2023. page 2 The Center appointed Mariia Koval as the sole panelist in this matter on June 30, 2023. 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, initially founded in 1901, is one of the world's largest security companies headquartered in London, England. The Complainant has been operating under its current name "G4S" since 2004, when Group 4 Falck and Securicor merged. In 2021, the Complainant was acquired by Allied Universal. Presently the Complainant has operations in more than 85 countries and has a network of more than 800,000 employees globally. The Complainant now operates under the name "G4S Limited". The Complainant offers a diverse range of services, broadly divided into the categories of "Security Solutions", "Cash Solutions", "Consulting Services", and "Care and Justice Services". The Complainant also provides tailored country-specific services across different industry sectors, which include, for example, courier-related services, as well as offerings for the sectors of retail and financial institutions. The Complainant is the owner of numerous G4S trademark registrations (the "G4S Trademark") across the world, among which are: - International Registration No. 885912, registered on October 11, 2005, in respect of goods and services in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, 45; - United States of America ("United States") Trademark Registration No. 3378800, registered on February 5, 2008, in respect of goods and services in classes 9, 39, 45; - European Union Trademark Registration No. 015263064, registered on September 20, 2016, in respect of goods in classes 6, 36, 37. The Complainant has a significant online presence, operating, among others, the domain names , , , , reflecting its G4S Trademark in order to sale and promote the Complainant's services; and being active on social-media platforms such as Facebook, Twitter, LinkedIn, Instagram and YouTube. The Disputed Domain Name was registered on September 15, 2022. As at the date of this Decision and when the Complaint was filed, the Disputed Domain Name resolves to a parked webpage, hosted by GoDaddy LLC, containing different pay-per-click ("PPC") links to third party websites. The Complainant sent a cease and desist letter to the Respondent on December 15, 2022, but no response was received from the Respondent. 5. Parties' Contentions A. Complainant The Complainant contends that it has acquired widespread consumer goodwill, having operated for over a century and under the G4S Trademark for more than 15 years. The Complainant highlights its presence in Nigeria, in which it operates in several locations across the country (Annex 10 to the Complaint). For example, in January 2019, the Complainant deployed 40 security teams across the south of Nigeria in order to protect the country's communication infrastructure. In addition, in the first six months of 2022, the Complainant carried out approximately 12,000 patrols per month in Nigeria. The Complainant claims that the Disputed Domain Name is confusingly similar to the Complainant's G4S Trademark in view of the Disputed Domain Name encompasses the G4S Trademark in its entirety with the page 3 addition of the letters "ng" (abbreviation for Nigeria) with a hyphen. The Complainant's G4S Trademark is the dominant and only distinctive element in the Disputed Domain Name. The addition of the hyphenated letters "ng" is not sufficient to alleviate the likelihood of confusion between the Complainant's G4S Trademark and the Disputed Domain Name. On the contrary, the addition only reinforces the connection with the Complainant, due to the Complainant's operations in Nigeria. The Complainant further 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 does not have any trademark rights to the term "G4S". There is also no evidence that the Respondent retains any unregistered trademarks to the term "G4S" or "ng-g4s", or any similar term. Neither has the Respondent received any license from the Complainant to use domain names featuring the G4S Trademark. The Complainant submits that the Respondent has not used, nor prepared to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently resolves to a parked webpage, hosted by GoDaddy LLC (Annex 12 to the Complaint). As such, it is passively held. Instead, the Respondent has deliberately registered the Disputed Domain Name that is confusingly similar to the Complainant's distinctive G4S Trademark. Moreover, the Complainant submits that the Respondent is not commonly known by the distinctive term "G4S", "ng-g4", or any similar term. Therefore, there is no plausible reason for the registration and use of the Disputed Domain Name, other than the motive of taking advantage of the goodwill and reputation attached to the G4S Trademark. Furthermore, whilst there have been no emails uncovered, the Complainant notes the Respondent's activation of a mail exchange (MX record) for the Disputed Domain Name and submits that the Respondent is likely using the Disputed Domain Name to carry out fraudulent activities (Annex 13 to the Complaint). The Complainant emphasizes the risk of harm that could be caused to unsuspected customers of the Complainant on receipt of emails from the Disputed Domain Name and alleges that the Respondent has likely engaged or will engage at some point in phishing activity, given the identical nature of the Disputed Domain Name to the Complainant's G4S Trademark. The Complainant further contends that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant's G4S Trademark registrations predate the registration date of the Disputed Domain Name by at least 17 years. In addition, substantial goodwill has accrued since the Complainant's establishment in 1901; the "G4S" name has become synonymous with its offerings and services within its industry. Searching "G4S" on popular Internet search engines such as Google list the Complainant's brand and services as the first result (Annex 14 to the Complaint). Searches for "G4S 13 NIGERIA" also shows the Complainant's operations in Nigeria as the top result (Annex 10 to the Complaint). Moreover, any average Internet user has access to G4S Trademark registrations, as they can be found on public trademark databases. Further, the Complainant acknowledges that the Respondent is a former employee of its company. The Complainant highlights that this is further evidence of bad faith registration, as it emphasizes that the Respondent had actual knowledge of the Complainant whom has not authorized the registration of the Disputed Domain Name including the Complainant's G4S Trademark, with which the Respondent has targeted. For all these reasons, the Complainant submits that the Respondent registered the Disputed Domain Name in bad faith, with the primary intention of taking advantage of the Complainant's brand. The Complainant also asserts that the Respondent has used the Disputed Domain Name in bad faith prior to notice of the Complaint. The Disputed Domain Name does not currently resolve to a functional webpage. Finally, the Complainant submits that upon identifying the registration of the Disputed Domain Name, a cease and desist letter was sent out to the Respondent on December 15, 2022. This letter was submitted to put the Respondent on notice of the Complainant's G4S Trademark rights, and with a view to resolving the matter amicably. However, the Respondent provided no response. page 4 B. Respondent The Respondent sent informal communications to the Center on May 8, May 9, and June 13, 2023, indicating that its willingness to sell the Disputed Domain Name, and if further pressure on the ownership on the Disputed Domain Name it will press legal charges. The Respondent did not submit a formal Response to the Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant to succeed must satisfy the panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has properly asserted its rights in the G4S Trademark due to the long use and significant number of registrations worldwide. The Panel notes that the registration of the Complainant's G4S Trademark significantly predates the registration of the Disputed Domain Name. The Disputed Domain Name completely reproduces the Complainant's G4S Trademark in combination with the term "ng", hyphen, and the generic Top-Level domain ("gTLD") ".com". According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8, where 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. The addition of the term "ng", to the G4S Trademark does not prevent a finding of confusing similarity. According to the WIPO Overview 3.0, section 1.11, the applicable gTLD 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. Pursuant to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. Furthermore, the use of hyphens in the Disputed Domain Name is irrelevant in a finding of confusing similarity, see e.g. Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd., WIPO Case No. D2010-2107 ("In the present case, the Panel finds that. adding a hyphen between the two words "maharaja" and "express" in the disputed domain name are insignificant modifications that do not reduce the confusing similarity between the disputed domain name and the Complainant's mark"). Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's G4S Trademark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has used its G4S Trademark for almost 20 years, which is long before the Respondent registered the Disputed Domain Name in 2022. page 5 The Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Respondent appears to own any G4S trademark, nor is the Respondent commonly known by the Disputed Domain Name. In accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The addition of the geographical term "ng", which is an abbreviation for Nigeria, where the Complainant is actively operating, to the Complainant's G4S Trademark in the Disputed Domain Name, is further evidence, that the Respondent was very well aware of the Complainant's G4S Trademark and business at the time of registration of the Disputed Domain Name and has done so for the purpose of creating a clear impression that the Disputed Domain Name is connected with the Complainant's G4S Trademark. Also, according to the Complainant the Respondent is the Complainant's former employee that confirms the fact of the Respondent's good awareness of the Complainant's business and G4S Trademark at the time of the Disputed Domain Name registration. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Disputed Domain Name is being used for a parked page containing PPC links that redirected to third party websites. The Panel also finds that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the G4S Trademark. Furthermore, in this case, the Respondent, having a chance to invoke any circumstances for demonstration of his rights or legitimate interests in the Disputed Domain Name, did not reply to the cease and desist letter sent by the Complainant, nor to the Complaint, and consequently has not rebutted the Complainant's prima facie case. In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of a respondent, namely: (i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent's documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the respondent's website or location. page 6 The Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith in view of the following. The Complainant obtained the registration of the G4S Trademark more than 20 years earlier than the Respondent registered the Disputed Domain Name in 2022. Having considered that the Complainant has spent huge amount of efforts to promote its G4S Trademark, the Panel finds that the Respondent was aware of the reputation of the G4S Trademark when registering the confusingly similar Disputed Domain Name that completely incorporates the Complainant's trademark with the addition of the term "ng" (abbreviation for Nigeria) relating to the country where the Complainant operates. The Panel considers it is obvious bad faith that the Respondent deliberately chose the Disputed Domain Name to create a likelihood of confusion with the Complainant's G4S Trademark so as to create a false association or affiliation with the Complainant. The Panel finds that, taking into consideration all circumstances of this case, the Disputed Domain Name has been registered and used in bad faith, with the Respondent's good awareness of the Complainant's G4S Trademark and with the Respondent's intention to benefit from the likelihood of confusion between the Disputed Domain Name and the Complainant's Trademark. The Disputed Domain Name directs to a parked page containing PPC links with third party links which is evidence of bad faith use as per paragraph 4(b)(iv) of the Policy. Furthermore, according to the Complainant the Respondent is a former employee of the Complainant. The Panel concurs with the Complainant that this is further evidence of the Disputed Domain Name's bad faith registration and that the Respondent had actual knowledge of the Complainant who has not authorized the registration of the Disputed Domain Name including the Complainant's G4S Trademark, with which the Respondent has targeted. Finally, the Respondent has failed to indicate any facts and/or evidence, which would show the good faith registration and use of the Disputed Domain Name. In all the circumstances, the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of 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. /Mariya Koval/ Mariia Koval Sole Panelist Date: July 14, 2023
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