WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G4S Plc v. Cao Xue Mei

Case No. D2018-2208

1. The Parties

The Complainant is G4S Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.

The Respondent is Cao Xue Mei of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <g-4-s.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On October 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2018, 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. On October 9, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in English and Chinese of the Complaint, and the proceedings commenced on October 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2018.

The Center appointed Rachel Tan as the sole panelist in this matter on November 13, 2018. 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 British multinational security services company initially founded in 1901 but has been trading as “G4S” since 2004 when the Danish company “4 Flack” merged with “Securicor”. The Complainant offers a range of services, including the provision of private prisoner transportation and care services, the transport and management of cash and valuables, the supply of security personnel and monitoring equipment to different industry sectors such as financial institutions, transport and logistics, energy and utilities, mining and metals, and governments. The Complainant employs around 570,000 people globally and operates in over 90 countries. The Complainant is publicly listed on the FTSE Index and Copenhagen Stock Exchange.

The Complainant has been using “G4S” as a trade name, trade mark in the form of both a word and a logo, since 2004. The Complainant owns trade mark registrations for G4S and G4S logo worldwide, including:

G4S International Registration No. 885912, registered on October 11, 2005, in Classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45. The International Registration has been granted full or partial protection in numerous jurisdictions;

logo European Union Registration No. 004645297, registered on May 15, 2007, in Classes 9, 35, and 45;

logo United Kingdom Registration No. UK00002391942, registered on March 17, 2006, in Classes 6, 9, 35, 37, 38, 39, and 45; and

G4S United States of America Registration No. 3378800, registered on February 5, 2008, in Classes 09, 39 and 45.

The Complainant registered the domain name <g4s.com> on December 1, 1999 and has been using it since that date. The Complainant’s website is available in multiple languages and country specific sites have been created. The Complainant has further registered a number of country code Top Level Domains (“ccTLD”), such as, <g4s.cn> registered on March 1, 2005, <g4s.cz> registered on January 27, 2003, and <g4s.in> registered on March 2, 2005.

The Respondent registered the disputed domain name <g-4-s.com> on April 28, 2018. The disputed domain currently resolves to an inactive website. The Complainant asserts that the disputed domain name previously redirects users to the website “www.avcao.info” which displays pornographic content. The website title and screenshot history of the disputed domain name on Domain Tools Whois appears to corroborate this fact.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trade marks, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:

(a) The Complainant has undertaken a reverse WhoIs search for domain names owned by the Respondent and located seven domain names containing English words;

(b) The Complainant is competent in English. The need for translation would add unnecessary expense to the Complainant who already bears the cost of filing the Complainant. This would be contrary to a cost effective and expedited resolution process. Moreover, this would go against the Policy that parties should be treated equally and given a fair opportunity to present their case whilst preserving the time span of the process; and

(c) The Complainant cites a number of UDRP decisions in which a panel has allowed the language of the proceeding to be in English rather than the language of the Registration Agreement.

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:

(a) The Complainant is a British company. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

(b) The Respondent’s choice of English words for other domain names indicates some familiarity with the English language;

(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and

(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2 Substantive Issues

On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established rights to the G4S trade mark.

The test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trade mark and the disputed domain name.

In this case, the disputed domain name is composed of the same letters and number, in the same order, as those of the Complainant’s G4S trade mark. The difference being that each component is separated by a hyphen. Previous UDRP panels have held that the use of a hyphen and lower case is inconsequential to the assessment of identity or confusing similarity. It is also permissible for the Panel to ignore the generic TLD suffix, in this case “.com”. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant needs to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the overall burden of proof rests with the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited.

In this case, the Complainant has established registered rights in the G4S trade mark which predate the registration of the disputed domain name by over 13 years. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

(a) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify its choice of the “g-4-s” letter and number combination;

(b) There is no indication that the Respondent is commonly known by the disputed domain name or has acquired trade mark rights to “g-4-s”;

(c) The Panel searched the combinations “g4s” and “g-4-s” using the Google search engine, but did not find any indication that these are commonly used acronyms for any goods or services; and

(d) The disputed domain name resolved to an active website showing graphic adult content. Previous UDRP panels have held that adult sex sites may be legal and constitute a bona fide offering of goods or services. However, seeing as the Respondent has chosen to stay silent, there is merit in the Complainant’s contention that the Respondent’s use of “g4s” in the disputed domain name to redirect Internet users to another website does not create a legitimate interest.

Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances which would constitute evidence of registration and use of a domain name in bad faith. The Panel concludes that based on the evidence submitted and all other relevant facts and circumstances, the Panel is satisfied that the Respondent has registered and used the disputed domain name in bad faith. In reaching its conclusion, the Panel had regard to the following circumstances:

(a) The Complainant’s G4S trade mark and domain names were registered well before the registration date of the disputed domain name. The Complainant has made extensive use of the G4S trade mark globally, including in China. A simple Internet search would have yielded a considerable amount of information about the Complainant in different languages including Chinese, the worldwide reputation of its brand, and its business activities. It is thus inconceivable that the Respondent was unaware of the Complainant’s trade mark rights at the time of registering the disputed domain name;

(b) There is no evidence to show that the Respondent is using the disputed domain name in good faith for the genuine offering of goods or services. The disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>). In the past, the disputed domain name was used to attract Internet uses to a pornographic site. Previous UDRP panels have uniformly held that regardless of the motivation of the Respondent, the diversion of domain names to a pornographic site using another’s trade mark is itself consistent with the finding that the domain name was registered and is being used in bad faith. See Six Continents Hotels, Inc. v. Sewern Nowak, WIPO Case No. D2003-0022 (<holidayinnakron.com>) and other UDRP decisions.

(c) The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Considering the Respondent’s lack of rights of legitimate interests, the past behaviour of the Respondent and the continued holding of the disputed domain name without good reason, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the third element under paragraph 4(a) 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 <g-4-s.com> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: November 27, 2018