WIPO Domain Name Decision D2023-1776 for g4scorp.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION G4S Limited v. Data Tech Case No. D2023-1776 1. The Parties The Complainant is G4S Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Data Tech, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (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 21, 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 (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) 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 26, 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 April 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2023. The Center appointed Torsten Bettinger as the sole panelist in this matter on June 12, 2023. 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 is a London-based global security company which provides security and facility services in around 90 countries across the world. Initially founded in 1901, the Complainant has been operating under its current name, G4S (or Group 4 Securicor) since 2004. The Complainant has a network of more than 800,000 employees globally. The Complainant owns several trademark registrations around the world incorporating the G4S (the "G4S Trademark"). These include: - European Union registration no. 15263064, registered on September 20, 2016 - European Union registration no. 15268113, registered on September 20, 2016 - United States of America registration no. 3378800 February 5, 2008 - International Registration registration no. 885912 October 11, 2005 The Complainant also holds several domain names incorporating the G4S Trademark, including , , , , and . The Complainant's social media presence under the G4S Trademark extends to Facebook, Twitter, LinkedIn, Instagram and Youtube. The disputed domain name was registered on September 21, 2022. The disputed domain name does not currently resolve (or redirect) to a functional webpage. The Complainant provided a screenshot of a website that shows that the Respondent previously used the disputed domain name to host an imitation site, purporting to make the disputed domain name resolve to a site that brandished a variation of the Complainant's logo and trademark. The Complainant sent out a cease and desist letter to the Respondent on December 14, 2022. The Respondent did not respond to that letter. 5. Parties' Contentions A. Complainant With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that the disputed domain name is confusingly similar to its registered trademark G4S and argues that: - the disputed domain name encompasses the G4S mark in its entirety with the addition of the term 'corp' (abbreviation for 'corporation') and that where a domain name incorporates the entirety of a trademark, it will normally be considered identical or confusingly similar to a Complainant's trademark for the purposes of the first Element of the Policy; - the Complainant's G4S mark is the dominant and only distinctive element in the disputed domain name and the addition of 'corp' is not sufficient to alleviate the likelihood of confusion between the Complainant's G4S mark and the disputed domain name but reinforces the connection with the Complainant, as it implies affiliation with the Complainant's company; - the generic Top-Level Domain (gTLD) ".com" should be disregarded by the Panel under the first element as it is a standard registration requirement. page 3 With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submits that: - 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, 'g4scorp', or any similar term; - the Respondent has not received any license from the Complainant to use domain names featuring the G4S trademark; - the Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name currently does not resolve to an active website or webpage but simply redirects Internet users to , a non-resolve site; - the Respondent previously used the disputed domain name to host an imitation site, purporting to make the disputed domain name resolve to a site that brandished a variation of the Complainant's logo and trademark in order to pass off as the Complainant and capitalize on the G4S mark and that such use is not a bona fide offering of goods or services; - to the best of the Complainant's knowledge, the Respondent is not commonly known by the distinctive term G4S, 'g4scorp', or any similar term; - the Complainant's trademark G4S is a distinctive term used to represent the Complainant's goods and services and that there is no generic or common usage for the term G4S; - by using the abbreviation 'corp', a generic abbreviation of the term 'corporation', in combination with the Complainant's G4S mark for a website that purports to imitate the Complainant's business offerings and brandish its G4S trademark and logo, the Respondent has sought to capitalize on the Complainant's well-known offerings in order to create a false impression that it is affiliated with the Complainant. Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that: - the Complainant's trademark registrations predate the creation date of the disputed domain name by at least 17 years; - 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; - the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create the presumption of bad faith; - by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website(s) 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(s) or location or of a product or service on the Respondent's website(s) or location; page 4 - the Respondent has used the disputed domain name with the addition of the abbreviation 'corp' to imitate the Complainant's offerings and brandish its logo and G4S trademark in order to pass off as the Complainant in order to confuse and mislead Internet users seeking or expecting to reach the Complainant's G4S offerings; - the use of a domain name to host an imitation site is inherently bad faith behavior; - by passing off as the Complainant, the Respondent exploited the Complainant's G4S mark by creating increased traffic to the site, and generating profit from potential purchases made on the site; - even though the disputed domain name does not currently resolve (or redirect) to a functional webpage the passive holding equates bad faith use of the disputed domain name as the (1) The Complainant's trademark had a strong reputation and was widely known; (2) the Respondent had taken active steps to conceal its true identity and (3) it was not possible to conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law. - the fact that the Respondent did not reply to a cease and desist letter prior to commencing the proceedings infers bad faith behavior. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns multiple trademark registrations for the mark G4S prior to the registration of the disputed domain name on September 21, 2022. It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases (see sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). In this case, the disputed domain name contains the Complainant's mark in its entirety and only differs from the Complainant's trademark G4S by the addition of the term "corp", a generic abbreviation of the term "corporation". The Panel notes that it has long been established under the UDRP case law that the addition of a merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of WIPO Overview 3.0). The Panel therefore agrees with the Complainant's assertion that the addition the designation "corp" does not prevent a finding of confusing similarity the disputed domain name from the Complainant's trademark. Furthermore, it is well accepted under the UDRP case law that the specific gTLD designation such as ".com", ".net", ".org" is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see WIPO Overview 3.0 section 1.11). page 5 For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant's G4S trademarks in which the Complainant has exclusive rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements: "(i) before any notice to you [the Respondent] of the dispute, your 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." The Complainant provided evidence of its extensive use and promotion of its G4S Trademark and stated that the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized by the Complainant to register the disputed domain name. Furthermore, the Complainant provided screenshots of a website that shows that the Respondent previously used the disputed domain name to host an imitation site, purporting to make the disputed domain name resolve to a site that brandished a variation of the Complainant's logo and trademark. These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. 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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Respondent chose not to contest the Complainant's allegations and has failed to come forward with any evidence to refute the Complainant's prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts. From the record in this case, the Respondent does currently not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. On this basis and in light of the fact that the disputed domain name except for the addition of the designation "corp" contains the Complainant's trademark in its entirety the Panel concludes that the Respondent lacks rights and legitimate interests in the disputed domain name and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 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 disputed domain name page 6 registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of 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 its 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. The Complainant holds multiple trademark registrations for the G4S Trademark in various countries that predate the registration of the disputed domain name. The Complainant provided evidence that the G4S Trademark is widely known in many countries and that the Complainant's website and social media profiles prominently identify the Complainant as G4S. Given that the disputed domain name except for the addition of the designation "corp" contains the Complainant's trademark in its entirety in the Panel's view, it is very likely that the Respondent was aware of the Complainant at the time it selected the disputed domain name for registration. This is sufficient to infer bad faith registration of the disputed domain name. Furthermore, the Complainant provided a screenshot of a website that shows that the Respondent previously used the disputed domain name to host an imitation site, purporting to make the disputed domain name resolve to a site that brandished a variation of the Complainant's logo and trademark. The Panel agrees with the Complainant's substantiated argument that by using the disputed domain name as described above, the Respondent has been trying to capitalize on or otherwise take advantage of the Complainant's trademark rights and that such use of a domain name indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. The fact that there is no evidence that the disputed domain name currently resolves to a webpage does not prevent the Panel from finding bad faith use of the disputed domain name. The Panel therefore finds that the Complainant also established the third element 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. /Torsten Bettinger/ Torsten Bettinger Sole Panelist Date: June 26, 2023


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