WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc v. Noman Burki
Case No. D2016-1383
1. The Parties
The Complainant is G4S Plc of West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Noman Burki of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <g4splc.com> (the "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 July 7, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 11, 2016.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 23, 2016. 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 was founded in Denmark in 1901 although it has only been trading under its current name, "G4S", since 2006. The Complainant is a multinational company which provides security products, services and solutions across six continents. The Complainant is well known throughout the world, particularly in theUnited Kingdom and Denmark. For example, it was selected as the official security services provider for the London 2012 Olympic and Paralympic Games. It is listed on the FTSE index and Copenhagen Stock Exchange, it employs over 600,000 individuals across 125 countries and its annual turnover in 2014 amounted to GBP 6.8 billion. The Complainant's main website is at "www.g4s.com".
The Complainant is the proprietor of the following registered trade marks:
1. Benelux trade mark number 766792 for the word "G4S" filed on May 10, 2005;
2. European Union trade mark number 4613378 for the word "G4S" filed on September 26, 2005; and
3. International Registration number 885912 designating at least Australia, Switzerland, Norway, Romania, Turkey and Uzbekistan for the word "G4S" registered on October 11, 2005.
The Domain Name was registered on September 8, 2015 and it resolves to a Pay-Per-Click ("PPC") parking site which features links to a number of third party sites, none of which appear to relate to the Complainant specifically or the security business more generally.
5. Parties' Contentions
The Complainant contends as follows:
1. The Domain Name is confusingly similar to the Complainant's "G4S" mark in which the Complainant has registered rights (the "Complainant's G4S Mark"). In particular:
1.1. after eliminating the top-level ".com" suffix from the analysis, the Domain Name string consists of the entirety of the Complainant's G4S Mark alongside the suffix "plc";
1.2. the suffix "plc" does not distinguish the Domain Name from the Complainant's G4S Mark since "plc" is an abbreviation of the terms "public limited company" and "plc" appears in the Complainant's trading name; and
1.3. the Domain Name is therefore confusingly similar to the Complainant's G4S Mark and it creates an overall impression of association with the Complainant.
2. The Respondent has no rights or legitimate interests in the Domain Name. In particular:
2.1. there is no evidence to suggest that the Respondent has a legitimate interest in the Domain Name as he is not known as "G4S plc";
2.2. the Domain Name resolves to a PPC page, which does not of itself constitute a bona fide offering of goods or services;
2.3. the Domain Name does not relate to any generic meaning of "plc";
2.4. the Respondent is taking advantage of the trade mark value in the Domain Name because Internet users are deceived before entering the website to which the Domain Name resolves. It is only upon entering that website, that Internet users realise that the Domain Name may not be associated with the Complainant. On this basis, the Respondent is causing "initial interest confusion" for profit; and
2.5. there is a risk that the Respondent may be using the email address in order to send fraudulent emails to third parties.
3. The Domain Name was registered and is being used in bad faith. In particular:
3.1. at the date the Domain Name was registered, September 8, 2015, the Complainant was well established and had been using the "G4S" name for 9 years;
3.2. the Respondent is intentionally creating a likelihood of confusion as to the source of the website to which the Domain Name resolves for the purpose of commercial gain; and
3.3. the Respondent has a portfolio of over 150 domain names, all of which were registered on the same date as the Domain Name, and all of which target other well-known trade marks including <btgroupplc.com>, <intercontinentalhotelsgro.com>, <marksspencergroupplc.com>, <morrisonwmsupermarketsplc.com> and <oldmutualplc.com>.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 5(f) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
It is accepted by the Panel that the Complainant has rights in the word "G4S" by virtue of the Complainant's G4S Mark referred to above.
The Domain Name fully incorporates the Complainant's G4S Mark. The Panel accepts that in this case, the top-level suffix in the Domain Name (".com") should be disregarded since it is a technical requirement of registration of the Domain Name and does not serve to distinguish the Domain Name from other domain names.
The Panel finds that the suffix of the Domain Name, "plc", has little distinctive character, since "plc" is a commonly used abbreviation of "public limited company". The Panel accepts that the Complainant's own use of "plc" as a corporate designation is liable to increase the likelihood that the Domain Name is confused with the Complainant. On the other hand, the prefix of the Domain Name, "G4S", is inherently distinctive and is likely to have acquired further distinctive character through the use of the Complainant's G4S Mark by the Complainant including at high profile events such as the London 2012 Olympics.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's G4S Mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Domain Name resolves to a PPC page containing links referring to a disparate range of goods and services, such as car rental services, language lessons, light bulbs and genealogy. The content of the website to which the Domain Name resolves bears no relation to the generic meaning of all or part of the Domain Name.
On this basis, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name such that the burden of proof shifts to the Respondent, who must rebut that prima facie case. For the avoidance of doubt, in arriving at this finding, the Panel has not taken into account the Complainant's assertion that there is a risk that the Respondent may be using the Domain Name to send fraudulent emails. The Complainant has not presented the Panel with any evidence that this risk has, or is likely to, materialise.
The Respondent has not responded substantively to the Complainant's Complaint and the Panel therefore infers that the Respondent has no rights or legitimate interest in the Domain Name (Betsson Malta Limited v. John Droker, WIPO Case No. D2010-0883) and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel accepts that at the date that the Domain Name was registered, the Complainant's G4S Mark was well known in the UK, Denmark and elsewhere throughout the world. The Panel also takes into account the fact that the Respondent registered a portfolio of over 150 domain names, which includes a variety of well-known household names or brands, on the same date as the Domain Name. In the absence of any explanation or justification from the Respondent, the Panel considers that the Respondent has engaged in a "pattern of conduct" (within the meaning of paragraph 4(b)(ii)) which supports the Complainant's assertion that the Respondent has intentionally made use of the Complainant's G4S Mark to attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the Domain Name (Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968).
Taking all of the circumstances into account, including the size of the Complainant, its multinational nature and its reputation, the Panel considers it unlikely that the Respondent was not aware of the Complainant's rights in the Complainant's G4S Mark.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 <g4splc.com> be transferred to the Complainant.
Date: September 5, 2016