WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G4S Plc. v. Domains By Proxy, LLC / Jay Hauser

Case No. D2019-2234

1. The Parties

The Complainant is G4S Plc., United Kingdom, represented by SafeNames Ltd., United Kingdom.

The Respondent is Domains By Proxy, LLC, United States of America / Jay Hauser, United States of America.

2. The Domain Name and Registrar

The disputed domain name <g4security.info> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2019, 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 September 18, 2019.

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 September 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2019.

The Center appointed Nicholas Smith as the sole panelist in this matter on October 16, 2019. 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 United Kingdom company, founded in 1901 but trading under the “G4S” name since 2004, involved in the provision of security products and services, which include logistics. The Complainant’s revenue in 2016 was 6.8 billion pounds sterling and it has been involved in providing its services at various high profile events including the 2012 London Olympics. The Complainant operates numerous websites promoting its services including its main website at “www.g4s.com”, registered in 1999 and “www.g4si.com” which is the Complainant’s website for its international logistics business. Each of these websites features the Complainant’s logo, which consists of the letters/numbers “G4S” with “g” and “s” black on a white background and “4” white on a red background.

The Complainant is the owner of numerous trademark registrations for marks consisting of the letter/number combination “G4S” (the “G4S Mark”) in various jurisdictions including an international registration registered on October 11, 2005 (registration number 885912). The G4S Mark has also been registered in the United States of America, the location of the Respondent, since 2008.

The Domain Name <g4security.info> was registered on June 20, 2019. The Domain Name resolves to a website (“the Respondent’s Website”) purporting to be a website of an international company called “G4S Security Company”. The Respondent’s Website reproduces the Complainant’s logo and purports to offer logistics services in direct competition with the Complainant, in jurisdictions (the United Kingdom and United States of America) where the G4S Mark is registered. In the “About Us” section of the Respondent’s Website, the Respondent lists, as its address, the Complainant’s postal addresses in the United Kingdom and United States of America.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s G4S Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the G4S Mark, having registered the G4S Mark in the United States and other jurisdictions. The Domain Name is confusingly similar to the G4S Mark since it wholly incorporates the G4S Mark and adds the descriptive word “(s)ecurity”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that impersonates the Complainant and purports to offer services in direct competition with the Complainant. Such use is not a bona fide offering of services.

The Domain Name was registered and is being used in bad faith. The Respondent has used the Domain Name to impersonate the Complainant which clearly shows its awareness of the Complainant at the time of registration. By using the Domain Name to resolve to a website that impersonates the Complainant and offers competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain and to disrupt the business of a competitor. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the G4S Mark, having registered the G4S Mark as a trademark in various jurisdictions including the United States. The Domain Name wholly incorporates the G4S Mark, adds the descriptive word “(s)ecurity” and the “.info” generic Top-Level Domain which may be disregarded as an essential element of any domain name.

Other UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”. The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884; See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.; WIPO Case No. D2011-1227. The Panel finds that the Domain Name is confusingly similar to the G4S Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the G4S Mark or a mark similar to the G4S Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. In particular, while the Respondent’s Website purports to be the website of the G4S Security Company, for the reasons set out below the Panel is satisfied that the Respondent is not a legitimate entity and is simply impersonating the Complainant. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.

The Respondent has used the Domain Name to operate a website that impersonates the Complainant. It does so by reproducing the Complainant’s logo, purporting to operate from the same physical locations as the Complainant, and purporting to offer logistics services in direct competition with the Complainant, under its G4S Mark. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, 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 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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 (paragraph 4(b) of the Policy).

The Panel finds that the Respondent was aware of the Complainant and its reputation in the G4S Mark at the time the Domain Name was registered. The Respondent’s Website purports to offer services in direct competition with the Complainant and reproduces the Complainant’s logo and address. The registration of the Domain Name in awareness of the G4S Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Respondent has used the Domain Name (which wholly incorporates the G4S Mark) to operate a website that impersonates the Complainant and purports to offer logistics services in competition with the Complainant and in the Complainant’s jurisdiction. Consequently the Panel finds 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 and the Complainant’s G4S Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (paragraph 4(b)(vi) of the Policy.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name, <g4security.info> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: October 24, 2019