ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION G4S Limited v. Daniel Graf Case No. D2023-5231 1. The Parties The Complainant is G4S Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom. The Respondent is Daniel Graf, Nigeria. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2023. On December 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 (Domain Admin, Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 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 18, 2023. The Center verified that the Complaint together with 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 January 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2024.
page 2 The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on January 30, 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 The Complainant is a security company based in the United Kingdom, which provides security and facility services on an international level. The Complainant also provides tailored country-specific services such as courier-related services. Among other registrations, the Complainant owns the following trademark registrations for G4S: - International trademark registration No 885912, registered on October 11, 2005, in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45; and - European Union trademark registration No 015263064, registered on September 20, 2016, in classes 6, 36 and 37. The Complainant has also registered the domain name in 1999. The disputed domain name was registered on July 10, 2023. Before the filing of the Complaint, the disputed domain name resolved to a website reproducing the Complainant’s trademarks and logo in connection with a purported offer of shipping services. At the time of the filing of the Complaint, the disputed domain name resolved to an inactive website. The Complainant sent a cease and desist letter to the named Respondent Privacy Protect LLC on September 28, 2023. This letter remained unanswered. The Mail exchanges (“MX records”) (i.e., the mail exchanger records specifying the mail server responsible for accepting email messages) for the disputed domain name suggest that it is or was possibly used for email communication. 5. Parties’ Contentions A. Complainant According to the Complainant, the disputed domain name is confusingly similar to its trademark G4S as it identically reproduces its trademark with the mere addition of the terms “delivery” and “service”. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Respondent has no trademarks rights in the term G4S neither has the Respondent received any license from the Complainant to use any domain name featuring its trademark; (ii) the Respondent is not commonly known by the distinctive term G4S, or any similar term; (iii) the Respondent has not used, nor prepared to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant used the disputed domain name to pass off as the Complainant and as a way to capitalize on the Complainant’s trademark. Finally, the Complainant contends that the Respondent has used and registered the disputed domain name in bad faith. By passing off as the Complainant, the Respondent exploited the Complainant’s trademark and created increased traffic to its website. These actions demonstrate, in the Complainant’s eyes, an intention to unlawfully profit from the use of the Complainant’s trademark. Furthermore, the activation of the MX
page 3 records and the fact that the Respondent encourages Internet users to insert their personal data further corroborate the use and registration in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent 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 domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. 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 Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 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. The Panel finds the mark is recognizable 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. Although the addition of other terms (here “delivery” and “service”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.
page 4 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. Furthermore, Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the disputed domain name resolved to a website impersonating the Complainant, which in the Panel’s view demonstrates an obvious attempt on the part of the Respondent to mislead Internet users seeking the Complainant’s services and website. 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 Respondent used the Complainant’s logo and trademark on its website and that the trademark G4S, which is distinctive, has been widely used before the registration of the disputed domain name. The Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademark. The Panel therefore accepts that the Respondent was aware of the existence of the Complainant and of its G4S trademarks at the time of the registration of the disputed domain name. The Respondent uses the disputed domain name in connection with an active website purporting to be an official website of the Complainant. A photograph of trucks bearing the logo of the Complainant is prominently displayed on the home page of the website connected to the disputed domain name. Furthermore, such website displays an email address built with the disputed domain name. This use is apt to lead Internet users into believing that the website at issue is an official website of the Complainant, and that they can contact the Complainant either by means of the contact form available on the website, or by means of the provided email address including the disputed domain name. Any such communication would presumably be received by the Respondent. Under these circumstances, the Panel considers it likely that the Respondent’s intent is to use the disputed domain name as a support for a potential fraudulent scheme, namely, to impersonate the Complainant and extract personal or financial data from Internet users visiting his website. Previous UDRP panels have found that such behavior amounts to use of a domain name in bad faith (see Marriott International, Inc., Marriott Worldwide Corporation and The Ritz-Carlton Hotel Company, LLC v. Van C Bethancourt Jr., Andre Williams, WIPO Case No. D2018-2428 and Accor v. Sangho Heo / Contact Privacy Inc., WIPO Case No. D2014-1471). Furthermore, the MX records relating to the disputed domain name suggest that it is or has been used for email communication, possibly for phishing purposes. UDRP panels have inferred a bad faith behavior from the activation of MX servers, which can be used to create email addresses for phishing purposes (see Kingfisher Investissements v. Brico Depot, Brico Depot, WIPO Case No. D2020-2702 and Robertet SA v. Marie Claude Holler, WIPO Case No. D2018-1878). By using the disputed domain name in such manner, the Respondent intentionally attempted to attract, for the purposes of commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation of this website. Such behaviour constitutes use in bad faith under paragraph 4(b)(iv) of the Policy.
page 5 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. /Anne-Virginie La Spada/ Anne-Virginie La Spada Sole Panelist Date: February 13, 2024
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