WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc v. Private Whois, Knock Knock Whois Not There, LLC / Charles Chinedu
Case No. D2020-2202
1. The Parties
The Complainant is G4S Plc, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Private Whois, Knock Knock Whois Not There, LLC, United States of America (“United States”) / Charles Chinedu, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <g4ssecured.com> is registered with Automattic Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 3, 2020 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 4, 2020.
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 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020.
The Center appointed Peter Burgstaller as the sole panelist in this matter on October 19, 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.
4. Factual Background
The Complainant is a leading British security services company with over 550,000 employees and subsidiaries around the world (Annex 4, 5, and 6 to the Complaint).
The Complainant is owner of several trademark registrations (Annex 7 to the Complaint) containing the mark G4S, especially:
- G4S (word), International Registration No. 885912, registered on October 11, 2005, in International Classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45;
- G4S (fig.), United Kingdom Registration No. 2391942, registered on March 17, 2006, in International Classes 6, 9, 35, 37, 38, 39, and 45;
- G4S (fig.), European Union Trade Mark No. 4645297, registered on May 15, 2007, in International Classes 9, 39, 45;
- G4S (word), United States Registration No. 3378800, registered on February 5, 2008, in International Classes 9, 39, 45;
- G4S (word), European Union Trade Mark No. 15263064, registered September 20, 2016, in International Classes 6, 39, 37.
Additionally, the Complainant is the registrant of the domain name <g4s.com>, which addresses its main website (Annex 6 to the Complaint); the Complainant is also owner of the domain names <g4s.cn>, <g4s.co>, <g4s.in>, and <g4s.us> (Annex 8 to the Complaint).
The disputed domain name was registered on July 22, 2020, (Annex 1 to the Complaint; Registrar’s Verification of August 26, 2020). The Complainant provided evidence that the disputed domain name resolved to a website containing the Complainant’s distinctive logo and trademarks; the Respondent also emphasized the Complainant’s distinctive G4S mark by prominently displaying the email address <g4s.secured1@[...]> at the website to which the disputed domain name resolved (Annex 10 to the Complaint).
5. Parties’ Contentions
A. Complainant
The Complainant is a British security services company initially founded in 1901 but which has been trading under its current name “G4S” since 2004. The Complainant is the world’s largest security solutions provider, which has over 550,000 employees and operates in over 100 countries across six continents. The company name of the Complainant’s United States-based subsidiary is G4S Secure Solutions (USA).
The Complainant also offers a diverse range of services, which include “Facilities Management”, “Health Services”, “Cash Solutions”, and “Security Systems and Technology”. In 2019, the Complainant’s revenue was GBP 7.8 billion, increasing by 3.4% from the previous year.
The Complainant has acquired widespread consumer goodwill, having operated for over a century and under the G4S brand for the past 15 years. As part of its efforts to protect its intellectual property, the Complainant, its affiliates, subsidiaries, and associated companies own G4S-trademarks and variations thereof within numerous jurisdictions including the United States, United Kington and European Union since 2005 onwards.
The Complainant registered its main website under “www.g4s.com” on December 1, 1999. The website allows users to browse the Complainant’s various sectors and services. The Complainant’s website is also available in multiple languages and under domain names containing the G4S mark under various country code Top-Level Domains (“ccTLD”).
The disputed domain name wholly incorporates the Complainant’s mark G4S and simply adds the descriptive and generic term “secured”; this addition does not obviate confusing similarity under the Policy.
The Respondent has not registered any trademarks for the terms “g4s” nor “g4sseccured”. The Respondent does not retain unregistered trademark rights in “g4s” or “g4sseccured”. Moreover, the Respondent has not been licensed by the Complainant to use domain names featuring the G4S trademark, and the Respondent’s use of the disputed domain name is purely commercial and is not legitimate.
The Complainant’s earliest G4S trademark registration predates registration of the disputed domain name by almost 15 years. The Complainant submits that the Respondent targeted the Complainant by specifically registering and using the confusingly similar disputed domain name for fraudulent impersonation purposes. Moreover, the site to which the disputed domain name resolved previously displayed a United States-based contact number; this constitutes further evidence of bad faith registration as it appears the Respondent had specific knowledge of and targeted the Complainant’s United States-based subsidiary with its company name G4S Secure Solutions. The Complainant also sent a cease and desist letter to the Respondent on July 29, 2020, and a follow-up notice on August 6, 2020. Although the Respondent did not reply it has taken down content from the relevant website which is further evidence that the Respondent lacks of any rights or legitimate interest in the disputed domain name and registered the domain name in bad faith.
The Respondent also used the disputed domain name in bad faith since internet users have been confronted with a website, which replicates the Complainant’s distinctive G4S logo as well as information pertaining to its business profile and operations. Moreover, the Respondent, aided by its impersonation of the Complainant, has used the disputed domain name to illegitimately collect personal data from website visitors by listing a contact email address which emphasizes the Complainant’s distinctive G4S mark (<g4s.secured1@[...]>).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that disputed domain name is confusingly similar to the Complainant’s registered distinctive marks G4S since it entirely contains this trademark and only adds the mere descriptive and dictionary term “secure”.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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. 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).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks G4S in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson,
WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The disputed domain name was registered on July 22, 2020. The Complainant has registered trademark rights in the mark G4S since 2005 and various domain name registrations containing the mark G4S since 1999 onwards, especially the domain name <g4s.com>. Moreover, the Complainant has promoted the G4S mark globally, and the G4S services have widespread recognition around the world especially with regard to security solutions.
The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the Respondent used a suffix to the Complainant’s trademark which refers to the Complainant’s main business (“security”) not to mention the use of the Complainant’s trademark in its email address (<g4s.secured1@[...]>).
These facts lead the Panel to the conclusion that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.
The disputed domain name moreover resolved to a website imitating a legitimate G4S brand website, including the well-known logo of the Complainant. Such use of a domain name can never confer rights or legitimate interests on a respondent – it is quite the contrary: the Respondent “free rides” on the reputation and the valuable goodwill of the Complainant’s trademark G4S and thus the use of the disputed domain name is suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site).
On the basis of the above facts, it is for the Panel incontestable that the disputed domain name is also being used in bad faith.
Finally, although the disputed domain name no longer resolves to the above-referenced content, the Panel notes that the Respondent has also failed to present any evidence of any good faith registration and use with regard to the disputed domain name; the Panel therefore finds there is no conceivable plausible reason for good faith registration and use with regard to the disputed domain name by the Respondent, and such use does not prevent a finding of bad faith in these circumstances.
Taking all these facts and evidence into consideration the Panel finds that the disputed domain name has been registered and used 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 disputed domain name <g4ssecured.com> be transferred to the Complainant.
Peter Burgstaller
Sole Panelist
Date: November 2, 2020
