WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc v. Domain Admin, Hush Whois Protection Ltd.
Case No. D2018-2551
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 Domain Admin, Hush Whois Protection Ltd. of Providence, Mahe, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <g4susa.com> (the “Disputed Domain Name”) is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 9, 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.
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 November 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2018.
The Center appointed John Swinson as the sole panelist in this matter on December 18, 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 G4S Plc of the United Kingdom. The Complainant specialises in security services. The Complainant was founded in 1901 and has been trading under its current name “G4S” since 2004. According to the Complaint, the Complainant is one of the largest security solutions providers in the world, with operations in over 100 countries.
The Complainant owns a number of registered trade marks for G4S, including International trade mark number 885912, registered on October 11, 2005 (the “Trade Mark”).
The Complainant registered a domain name which incorporates the Trade Mark, being <g4s.com>, on December 1, 1999.
The Respondent is Domain Admin, Hush Whois Protection Ltd of the Seychelles. The Respondent did not file a Response and consequently little information is known about the Respondent. The Respondent appears to be a privacy service.
The Respondent registered the Disputed Domain Name on December 10, 2012. The website at the Disputed Domain Name does not currently resolve to an active website but previously resolved to a pay-per-click (“PPC”) link page.
5. Parties’ Contentions
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark as it incorporates the Trade Mark in its entirety with the addition of the term “USA”.
Rights or Legitimate Interests
The Respondent has not registered any trade mark for the term “G4S” or “G4S USA” and therefore does not hold rights in the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name.
The website at the Disputed Domain Name does not currently resolve to an active website but previously resolved to a PPC link page, prior to the cease and desist letter sent by the Complainant on August 24, 2018. The links diverted to websites associated with the Complainant’s business including security services and security jobs. At one point, the Disputed Domain Name was offered for sale on the website.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Registered and Used in Bad Faith
The Complainant has used the Trade Mark for 13 years prior to the registration of the Disputed Domain Name. The Complainant has a strong reputation and is well-known throughout the world. It is more likely than not that the Respondent knew, or at least was aware, of the Complainant’s goodwill and reputation at the time of the registration of the Disputed Domain Name.
Further evidence of bad faith is that the Respondent advertised the sale of the Disputed Domain Name on the webpage. The Complainant also sent the Respondent a cease and desist letter on August 24, 2018.
The Respondent has intentionally attempted to attract Internet users to its website, by creating confusion among users as it incorporates the Trade Mark with the addition of the geographical term “USA”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a formal Response.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the geographical term “USA” as the only additional term. A domain name which incorporates a registered trade mark only with the addition of a geographical term is often considered by panels to be confusingly similar to the relevant trade mark for the purposes of the first element (see section 1.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the website at the Disputed Domain Name has previously been used to display PPC links. These links related to security services, the same industry in which the Complainant operates. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
- The Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It is open for the Panel to infer that the Respondent was receiving click-through revenue from the PPC links on the website at the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by 7 years. The Panel accepts the Complainant’s submission that the Complainant has a strong reputation and is well-known throughout the world in the field of security services.
Based on the evidence provided by the Complainant, the Panel finds that the Respondent likely had knowledge of the Trade Mark at the time it registered the Disputed Domain Name. This is clear from the content that had previously been hosted on the website at the Disputed Domain Name, namely PPC links advertising services in the same industry as the Complainant.
The Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element 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 <g4susa.com> be transferred to the Complainant.
Date: January 1, 2019