ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION G4S Limited v. Dilip Shanghvi Case No. D2023-5068 1. The Parties The Complainant is G4S Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Dilip Shanghvi, India. 2. The Domain Name and Registrar 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 December 5, 2023. On December 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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 December 8, 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 December 11, 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 December 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2024.
page 2 The Center appointed Fabrice Bircker as the sole panelist in this matter on January 31, 2024. 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 According to uncontested evidence, the Complainant is a London based company providing security and facility services in more than 80 countries worldwide. The Complainant originates from a business founded in 1901 and the group to which it currently belongs has a network of more than 800,000 employees globally. The Complainant has been operating under the G4S brand since 2004, and notably holds the following trademarks registrations: - G4S, International trademark registration No. 885912, registered on October 11, 2005, protected, among others, in Australia, China, and the United States of America, in particular for services of Class 45, - G4S, European Union trademark No. 015263064, registered on September 20, 2016 for products and services of classes 6, 36, and 37. The disputed domain name, , was registered on May 17, 2023. According to the available records and to the Panel’s observations1, the disputed domain name resolves to a parked website that displays pay-per-click links mainly promoting security products and services. Very little is known about the Respondent, except that he is apparently located in India, based on the information disclosed by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its G4S trademark, because it reproduces the later, and the added elements do not prevent it from being recognizable. Besides, the Complainant argues that the Respondent has no rights or legitimate interests in respect with the disputed domain name, in substance because: - the Respondent has not registered any trademark for the term G4S, and there is no evidence that it holds any corresponding unregistered rights; 1 It is well established that the general powers of a panel as articulated inter alia in paragraphs 10 and 12 of the Rules include, among others, the possibility to undertake limited factual research into matters of public record if the panel considers such information useful to assessing the case merits and reaching a decision. These limited factual research notably include visiting the website linked to the disputed domain name (see for instance, section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
page 3 - the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the G4S mark in any way; - the Respondent is commercially using the disputed domain name in relation with pay-per-click advertising links, which diverts Internet users to websites competing with the Complainant, and amounts to capitalize on the reputation and goodwill of the Complainant’s mark to enable the Respondent to generate monetary revenue; - the Respondent is not commonly known as G4S; - the Respondent has set up mail exchange records for the disputed domain name which exposes the Complainant to see the disputed domain name used for fraudulent activity, given the closeness of the disputed domain name with the G4S trademark. Then, the Complainant contends that the disputed domain name has been registered in bad faith, notably because: - the G4S trademark predates the registration of the disputed domain name by almost 20 years; - anyone who has access to the Internet can find the Complainant’s trademark on public trademark databases and on popular search engines; - the Complainant is well-known in the United Kingdom, Germany and elsewhere throughout the world, such as in Africa and Asia, with a presence in India; - the Respondent has ignored the cease-and-desist letter sent by the Complainant. At last, the Complainant submits that the disputed domain name is being used in bad faith, notably because: - the Respondent is intentionally using the commercial value and goodwill of the Complainant’s brand to attract and redirect Internet users to its own website; - the use of the disputed domain name to redirect toward a website displaying pay-per-click links constitutes an attempt to generate a commercial gain, particularly by misleading Internet users; - the Respondent’s activation of mail exchange records for the disputed domain name creates a risk of phishing. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, for obtaining the transfer of the disputed domain name, the Complainant must establish each of the following three elements: 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 has been registered and is being used in bad faith. Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
page 4 Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see WIPO Overview 3.0, section 4.3). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO, section 1.7. Based on the available record (Annex 7 of the Complaint), the Panel finds that the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Besides, the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Indeed, although the addition of other terms (here, “india”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Indeed, the Complainant contends that it has not given its consent for the Respondent to use its G4S trademark in a domain name registration or in any other manner. Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name. Furthermore, the disputed domain name resolves to a parked page displaying sponsored links, which amounts to a commercial use.
page 5 In this respect, panels have generally found that the use of a domain name to host a parked page comprising of pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. Here, given i) the confusing similarity of the disputed domain name with the Complainant’s prior trademark, ii) the fact that pay-per-click links on the website to which the disputed domain name resolves, redirect to websites offering products and services competing with the Complainant, and iii) the repute of the G4S trademark (see notably in this respect G4S Limited v. Chou Kaiser, WIPO Case No. D2023-1778, or G4S Limited v. Ana Cristina Santos, WIPO Case No. D2023-1760) the Panel finds that the Respondent is commercially using the disputed domain name to unduly capitalizing on the value of the Complainant’s trademark and to misleadingly diverting consumers. In view of all the above, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that: - the use of the G4S trademark predates the registration of the disputed domain name by almost 20 years; - the Complainant’s trademark is intrinsically distinctive and enjoys of a repute; - the disputed domain name identically reproduces the Complainant’s trademark with the mere addition of the name of a country (i.e., “india”) in which the Complainant operates; furthermore, the Respondent is located in this country; - the Complainant has demonstrated that a mere Google search on “G4S” reveals its rights; - pay-per-click links displayed on the website connected with the disputed domain name promote products and services competing with the Complainant’s activities, that creates a likelihood of confusion given the closeness of the disputed domain name with the Complainant’s trademark; - the Respondent ignored the cease-and-desist letter sent by the Complainant before the submission of the Complaint. These elements clearly show that on the balance of the probabilities the Respondent was aware of the Complainant’s G4S trademark when it registered the disputed domain name, and that it is using the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s prior rights. Therefore, this case falls within the scope of paragraph 4(b)(iv) of the Policy, namely: “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.” Besides, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
page 6 In this respect, the Panel notes that two email server records are configured with the disputed domain name. Given i) the nature of the disputed domain name in as far it consists in the reproduction of the Complainant’s trademark with the name of a country (namely India), ii) the fact that the G4S trademark is intrinsically distinctive and enjoys a repute, iii) the presence of the Complainant on the Indian market, iv) the clear absence of rights of the Respondent on the disputed domain name, and v) the fact that not only one, but two email server records are configured, what necessarily results from a deliberate action from the Respondent, it is highly credible that the Respondent may be in a position to send emails unduly impersonating the Complainant. As a consequence, the Panel is of the opinion that the Respondent is also using the disputed domain name in a way that represents an unbearable threat hanging over the head of the Complainant, which constitutes further evidence of the Respondent’s bad faith. The Panel finds that the Complainant has 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. /Fabrice Bircker/ Fabrice Bircker Sole Panelist Date: February 13, 2024
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