WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S plc v. Stephen Ong
Case No. DTV2011-0015
1. The Parties
The Complainant is G4S plc of Crawley, West Sussex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Zacco Netherlands B.V., Netherlands.
The Respondent is Stephen Ong of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <securicor.tv> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 20, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 20, 2011, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2011.
The Center appointed Jon Lang as the sole panelist in this matter on October 25, 2011. 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 formerly known as Group 4 Securicor Plc, and is a prominent provider of security services covering a wide field of activity with operations in more than 125 countries. It has over 625,000 employees.
The Complainant is the owner of several trademarks containing the mark SECURICOR; e.g., international registration 885911 for GROUP 4 SECURICOR (date of registration being October 11, 2005) and CTM registration 004645321, for G4S GROUP 4 SECURICOR, with a registration date of March 29, 2007 (filing date, October 10, 2005).
The Complainant has not registered the GROUP 4 SECURICOR or G4S GROUP 4 SECURICOR trademarks in Tuvalu.
The Complainant contacted the Respondent in order to have the domain name in dispute, <securicor.tv>, (the Domain Name) transferred voluntarily to the Complainant in return for monetary compensation but no response was received from the Respondent.
Nothing is known about the Respondent as he has not participated in this proceeding.
The Domain Name was apparently created on July 23, 2005 according to the publicly available WhoIs database.
5. Parties’ Contentions
The Domain Name is confusingly similar to the trademarks GROUP 4 SECURICOR and G4S GROUP 4 SECURICOR as it reproduces the word “securicor” in its entirety with only the addition of the ccTLD ‘.tv’.
The likelihood of confusion is increased because the Respondent’s website “www.securicor.tv” contains articles referring to personal safety and internet security, fields of activity in which the Complainant is active.
The Respondent is using the Domain Name in an attempt to intentionally attract Internet users to his website for commercial gain.
Absence of rights or legitimate interests
The Respondent has no rights or legitimate interest in the Domain Name.
The Complainant has no relationship with the Respondent nor has the Complainant authorized the Respondent to use the Domain Name.
There is no evidence that the Respondent is using the Domain Name in connection with a bona fide offering of goods and services.
The Respondent is not commonly known by a name similar to the Domain Name and the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers.
The Complainant asserts that the Respondent must have known of the Complainant’s trademarks at the time he registered the Domain Name. Securicor plc, which merged with Group 4 Falck to form G4S plc, the Complainant, in 2004, was one of the United Kingdom’s largest security businesses.
The Complainant believes the Respondent has registered and is using the Domain Name in bad faith. The Complainant believes that the Respondent is capitalizing on the Complainant’s long history, reputation and goodwill attached to the name “Securicor.”
Given the Complainant’s trademark registrations and its wide reputation, it is unlikely that the Respondent was unaware, at the time of registration of the Domain Name, of the existence of the Complainant’s trademarks.
The Respondent’s registration and use of the Domain name attracts Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Domain Name is not identical to the Complainant’s mark so it is necessary to consider whether it is confusingly similar. Under the UDRP, this involves a comparison, on a visual or aural level, between the trademark and the domain name to determine likelihood of Internet user confusion. In order to satisfy the test, the trademark would generally need to be recognizable as such within the domain name. However recognition of a prominent and/or distinctive part of a trademark within, or indeed comprising the domain name, may well suffice.
Given the distinctive nature and prominence of the word “securicor” contained within the Complainant’s marks and that it (the word “securicor”) comprises the entire Domain Name (ignoring the suffix), the Panel is satisfied that <securicor.tv> is confusingly similar to the Complainant’s trademarks. (Clearly, the Complainant has ‘rights’ in its own trademarks for the purposes of the Policy).
Even if one were to adopt a possibly slightly higher burden and require, as some panels may have been seen to do, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the Complainant’s marks to which it is similar, or that there is some form of association between the Respondent and the Complainant.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4 of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that he does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name.
Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves i.e. an information source on the very sector in which the Complainant operates, including, for instance, the provision of information that may assist users in buying security equipment (but not necessarily that of the Complainant), the Panel would not accept that there is legitimate noncommercial or fair use. In any event, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name he did was to deliberately create an impression of association with the Complainant. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. It is not clear whether goods and services are offered on or through the Respondent’s site but be that as it may, it would be difficult to accept that promotion of a website to which a confusingly similar domain name resolves, through which goods or services competing with those of a complainant (if that were the case) can be obtained, could be a bona fide offering.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It seems clear, given the fame of the Complainant’s trademarks and the use to which the Domain Name has been put, that the Respondent must have been aware of the Complainant’s trademarks when the Domain Name was registered.
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <securicor.tv> be transferred to the Complainant.
Dated: November 8, 2011