WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc v. Sikko van der Donk
Case No. D2016-0650
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 of Great Britain and Northern Ireland.
The Respondent is Sikko van der Donk of Rotterdam, the Netherlands.
2. The Domain Name and Registrar
The Disputed Domain Name <g4s-plc.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date 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 April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 9, 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
G4S Plc, the Complainant, is a British multinational security services company that was formerly known as Group 4 Securico Plc. The Complainant has been operating as G4S after a merger completed in July 2004 between the company Securicor plc and Group 4 Falck A/S. The Complainant specializes in secure outsourcing and is the largest employer quoted on the FTSE Exchange. The Complainant asserts that it has a global presence with operations on six continents and has invested time in building its online reputation via social media.
The Complainant is the owner of numerous trademarks matching the initials "G4S" and specifically the following ones:
- European Union trademark G4S No. 004613378, filed on September 26, 2005 and registered since March 14, 2007, covering goods and services in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45;
- Benelux trademark G4S No. 0766792, filed on May 10, 2005 and registered on June 3, 2005 (renewed), covering goods and services in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45
- International trademark G4S No. 885912, dated October 11, 2005 (renewed), covering goods and services in classes 1, 5, 6, 9, 16, 41, 42, 44 and 45.
The Disputed Domain Name <g4s-plc.com> was registered on October 30, 2014 and is currently inactive.
5. Parties' Contentions
Firstly, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to its G4S trademark.
According to the Complainant, the Disputed Domain Name consists of the entire G4S trademark with the addition of the suffix "PLC" separated with a hyphen. The suffix itself is an abbreviation of the term "public limited company" and also the entirety of the Complainant's trading name. The Complainant adds that the hyphen does nothing to visually or phonetically differentiate the Disputed Domain Name from the Complainant's G4S trademark. Thus, the Disputed Domain Name clearly creates an overall impression of association with the Complainant and is confusingly similar to its G4S trademark.
Besides, the Complainant asserts that it is not necessary to take into account the generic Top-Level Domain ("gTLD") ".com" when drawing a comparison between the visual or aural nature of the G4S trademark and the Disputed Domain Name.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name, as he is not known as G4S Plc and has not registered any trademark for the same.
According to the Complainant, the Respondent misused the Disputed Domain Name in order to damage the Complainant's reputation and the G4S trademark, which does not constitute a bona fide offering of goods or services within the meaning of the Policy. The Complainant provides the results of an online search in this regard.
The Complainant states that the Disputed Domain Name does not resolve to an active website. The Respondent has allegedly ceased use of the Disputed Domain Name after his account was suspended in November 2014 but has retained ownership of the Disputed Domain Name. The Complainant asserts that the non-use of the Disputed Domain Name does not constitute fair use as the use of the Complainant's G4S trademark causes confusion. The Complainant considers that Internet users who are seeking the Complainant's goods or services are deceived as they are attracted by the use of the Complainant's trademark within the Disputed Domain Name. It is upon accessing the website that the Internet users may have realized that the Disputed Domain Name may not be associated with or an official website of the Complainant.
The Complainant also argues that while the Respondent is not making use of the Disputed Domain Name as a website, the Respondent may be using an email address using the Disputed Domain Name in order to further deceive customers by sending out fraudulent emails posing a risk to the Complainant's reputation and trademark.
Thirdly, the Complainant contends that the Disputed Domain Name is registered and used in bad faith.
The Respondent registered the Disputed Domain Name on October 30, 2014. In the Complainant's view, there is thus no doubt that the Respondent was clearly aware of the Complainant's business and brand at the time of registration, as the Complainant was then well established and in operation, using the G4S trademark for eight years.
The Complainant provides online articles, which shows the impact of the damage caused to the Complainant's G4S trademark due to false statements made by the Respondent. This led to the suspension of the Respondent's account and the takedown of his website but the consequences continued to harm the Complainant as its stock prices were affected. This malicious use of the Disputed Domain Name would thus indicate bad faith registration and use within the meaning of the Policy, as well as the Respondent's pure malice and aforethought in registering the Disputed Domain Name.
The Complainant indicates that its representatives sent a cease and desist notification to the Respondent on February 11, 2016 outlining the Complainant's rights and the Respondent's infringing behavior. No response was received from the Respondent neither to acknowledge the communication nor to surrender the Disputed Domain Name. For the Complainant, the Respondent's behavior is tantamount to willful infringement and shows a blatant disregard for the intellectual property rights of others.
The Complainant claims that the Respondent has used false WhoIs information and that investigations on the Respondent's alleged name "Sikko Van Der Donk" did not produce any information suggesting that it is a real person. Instead, the results were related to the fraudulent use of the Disputed Domain Name and stated that the Respondent has used a bogus name.
The Complainant also states that the passive holding of the Disputed Domain Name with knowledge that it infringes on another party's trademark rights is evidence of bad faith registration and use.
For the Complainant, it could thus be inferred from the Respondent's past use of the Disputed Domain Name that there exists a great risk to the Complainant's brand and reputation should this domain name be allowed to remain in the hands of the Respondent.
Therefore, the Complainant requests the Panel to order that the Disputed Domain Name <g4s-plc.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions and is therefore in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that a Respondent's default does not automatically result in a decision in favor of the Complainant. Although, the Panel may draw appropriate inferences from a Respondent's default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that in this case, there are no such exceptional circumstances. Consequently, failure on the part of Respondent to file a response to the Complaint permits an inference that the Complainant's reasonable allegations are true. It may also permit the Panel to infer that the Respondent doesn't deny the facts that the Complainant asserts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of registered G4S trademarks, which were registered before the Disputed Domain Name was registered on October 30, 2014. Two of the cited trademarks cover the Netherlands, were the Respondent is apparently located.
The Panel notes an inaccuracy in the Complaint, regarding the classes for which two of the trademarks G4S cited by the Complainant are actually registered. However, as the Complainant provides evidence of the actual registration of these trademarks, the Panel considers that this inaccuracy does not preclude the fact that the Complainant has rights on the G4S trademarks.
The Panel therefore turns to the second part of the inquiry.
It is well-established that "a domain name that wholly incorporates a Complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
Here, the Disputed Domain Name entirely reproduces the Complainant's G4S trademark.
Previous UDRP Panels have held that when a domain name entirely incorporates a complainant's registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 or Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).
Besides, the G4S sign is followed by the letters "PLC", separated by a dash. The letters "PLC" correspond to the abbreviation of the terms "Public Limited Company", which is precisely the legal form of the Complainant. The Panel finds that the addition of this generic abbreviation does not dispel the likelihood of confusion. On the contrary, it enhances the risk of confusion since it is commonly used to designate the Complainant.
Furthermore, the presence of a dash is irrelevant. Former UDRP Panels have stated that a dash in a domain name "add[s] no distinctiveness whatsoever" (see Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853).
Finally, regarding the addition of the gTLD ".com" to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
Indeed, "a principle which applies to all the domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (".com", ".net") does not change the assessment of confusing similarity" (see Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).
In view of the above, the Panel considers that the Complainant has proven that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed 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".
Prior UDRP panels have stated that it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Credit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant's trademarks. There is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods and services.
Furthermore, the Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the G4S trademark or the Disputed Domain Name.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in light of the Complainant's evidence that the Respondent's intention was to use the Disputed Domain Name to create a scheme aiming to deliver false information on the Complainant, which allegedly included a fake website imitating the Complainant's and the sending of fraudulent emails through the Disputed Domain Name.
Moreover, the Respondent has not filed a Response to the Complainant's contentions to try to demonstrate a possible legitimate interest or right in the Disputed Domain Name.
In all of these circumstances, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must show that the Disputed Domain Name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
As stated above, the Disputed Domain Name incorporates identically the Complainant's G4S trademark, and reproduces the name as well as legal form of the Complainant, without any authorization from the Complainant.
According to the WhoIs history of the Disputed Domain Name, the Respondent has acquired the Disputed Domain Name after the registration of the Complainant's trademarks.
The Respondent did not respond to the Complainant's cease and desist letter sent prior to commencing the present proceeding and has not filed any Response to the Complainant's contentions. In the absence of any explanation from the Respondent, the Panel considers more likely than not that the Respondent intentionally registered a domain name identical to the Complainant's trademarks to benefit from the goodwill associated with the trademarks and to create a likelihood of confusion with the Complainant's trademarks.
Moreover, the Panel finds that the Complainant provides evidence that the Disputed Domain Name has likely been subject to a malicious use by the Respondent. The Disputed Domain Name allegedly resolved to a website imitating the official website of the Complainant, including a fake statement that the Complainant made accounting errors and that its finance chief was fired.
This entails that the Respondent has incorporated and used the Complainant's trademark name in a bad faith attempt to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of the fake displayed website. In this respect, the registration and use, for a certain period of time, of the Disputed Domain Name to copy and mirror a website of the Complainant constitutes evidence of bad faith (see Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502).
It seems very likely that the purpose of the registration and the use of the Disputed Domain Name by the Respondent was to impersonate the Complainant in order to disrupt its business and damage its reputation.
The Disputed Domain Name is not actively used anymore and it does not resolve to a website. However, it is well established that "the concept of a domain name 'being used in bad faith' is not limited to positive actions. It is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Noting that the Disputed Domain Name incorporates the G4S trademark, together with the abbreviation "PLC" related to the legal form of the Complainant, that no Response has been filed, that there appears to be no conceivable good faith use that has been or could be made by the Respondent of the Disputed Domain Name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case, thus that the Disputed Domain Name has been registered and used 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 Disputed Domain Name <g4s-plc.com> be transferred to the Complainant.
Date: May 18, 2016