Complainant is G4S Plc, United Kingdom, represented by SafeNames Ltd., United Kingdom.
Respondent is Mathia Klif, Nigeria.
The disputed domain name <g4sfconline.com> is registered with Upperlink Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2020.
The Center appointed Phillip V. Marano as the sole panelist in this matter on March 3, 2020. 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.
Complainant is a British security services company founded in 1901, which has traded under the name G4S since 2004 when the companies Group 4 Flack and Securicor merged. Complainant is currently one of the largest security solutions providers in the world, with operations in over 100 countries, providing manned security services, security systems, secure facilities services, monitoring and response services, and risk management and consultancy services. Complainant owns valid and subsisting registrations for the G4S trademark in numerous countries around the world, including in the United States of America (“United States”) and throughout the European Union, with the earliest priority dating back to October 11, 2005.
Respondent registered the disputed domain name on July 20, 2019. At the time of filing the Complaint, the disputed domain name resolves to a hosting provider website that reads “This account has been suspended”. The disputed domain previously resolved to a website advertising transportation and logistics solution services from “G4S Security and Courier Company.”
Complainant asserts ownership of the G4S trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including in the United States and the European Union, with earliest priority dating back to October 11, 2005.
The disputed domain name is confusingly similar to Complainant’s G4S trademark, according to Complainant, because it incorporates the G4S trademark in its entirety with the addition of the words “online” and the letters “fc”, which do not adequately distinguish the disputed domain name.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the belief that the disputed domain name has been suspended due to fraudulent activity; previous use of the disputed domain name to hold a website offering services directly identical to Complainant’s under the name “G4S Security and Courier Company” in an attempt to impersonate Complainant; and the lack of any evidence that Respondent has ever been known by the G4S trademark or the disputed domain name.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the global fame of the G4S trademark has achieved over the past 15 years; Respondent’s attempts to impersonate Complainant through the “G4S Security and Courier Company” website in order to mislead Internet users; the belief that Respondent’s website was suspended as a result of fraudulent activities; and Respondent’s failure to reply to Complainant’s cease and desist letter.
Respondent did not reply to Complainant’s contentions.
In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the G4S trademark has been registered in the United States and the European Union with priority dating back to October 11, 2005, nearly 15 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the G4S trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s G4S trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s G4S trademark because, disregarding the generic Top-Level Domain (“gTLD”) “.com”, the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
The confusing similarity is not dispelled by combination with the descriptive term “online”. WIPO Overview 3.0, section 1.8 (additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”); OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”)
In view of Complainant’s registration for the G4S trademark and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1.
It is evident that Respondent, identified by registration data for the disputed domain name as Mathia Klif, is not commonly known by the disputed domain name or Complainant’s G4S trademark.
UDRP panels have categorically held that use of a domain name for illegal activity – including the impersonation of the complainant and other types of fraud – can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). See alsoThe Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501 (“In addition, the disputed domain names … have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”)
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name and Complainant’s credible argument that Respondent’s website attempted to impersonate Complainant and was suspended for fraudulent activity, the Panel concludes that Complainant has established the second element of the Policy.
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
There can be little doubt that the disputed domain name was registered by Respondent with knowledge of Complainant. Respondent modeled its own “G4S Security and Courier Company” website after the security and logistics services offered under Complainant’s own G4S trademark.
UDRP panels have categorically held that registration and use of a domain name for illegal activity – including impersonation, passing off, and other types of fraud – is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely Complainant.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017; see also GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt the Complainant’s business by using it to impersonate the Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain).
In this Complaint, Complainant submitted a credible argument that Respondent has attempted to impersonate Complainant in order to perpetrate an unspecified fraud on the public or other illegal activity. The circumstantial evidence supporting Complainant’s argument includes Respondent’s misappropriation of Complainant’s G4S trademark on a website offering security and logistics services overlapping with Complainant’s own security services. The circumstantial evidence in this Complaint also includes the suspension of Respondent’s webhosting services for an unspecified reason, presumably due to illegal activity. The Panel takes notice that whilst Whogohost accounts can be suspended for innocuous reasons, such as nonpayment or nonrenewal, the identical Respondent has also reportedly been associated with fraudulent activity perpetrated through the <ffasco.com> domain name by the online anti-fraud information website <scamwarners.com>.
The Panel further concludes that failure by Respondent to answer Complainant’s cease and desist letter “suggests that Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.” See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 (internal citations omitted). See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003. Furthermore, the failure of Respondent to answer this Complaint or take any part in the present proceedings, in the view of the Panel, is another indication of bad faith on the part of Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, in view of Complainant’s credible argument that Respondent’s website attempted to impersonate Complainant and was suspended for fraudulent activity, and Respondent’s failure to take part in any pre- or post-filing facet of this proceeding, the Panel concludes that Complainant has established the third element of the Policy.
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 <g4sfconline.com> be transferred to Complainant.
Phillip V. Marano
Date: March 20, 2020
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