WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc. v. Thiago07 10messi
Case No. D2019-0676
1. The Parties
Complainant is G4S Plc. of United Kingdom, represented by SafeNames Ltd., United Kingdom.
Respondent is Thiago07 10messi of India.
2. The Domain Name and Registrar
The disputed domain name <g4sess.xyz> (“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 March 25, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on May 8, 2019. 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
Complainant is the largest security solutions companies in the world, employing over 585,000 people in over 100 countries. Complainant, founded in 1901 and headquartered in the United Kingdom, is a publicly traded company that has been operating under the G4S name since 2004. Complainant’s revenue was GBP 7.8 billion in 2016. Complainant provides services to financial institutions and entities operating in the transportation and logistics, leisure and tourism, government, private energy and utilities, mining and metals segments.
Complainant has actively promoted its G4S mark through advertising and affiliation with high profile global events such as the London 2012 Olympics and the One Love Manchester benefit concert in May 2017.
Complainant is the proprietor of trademark registrations containing the G4S mark (the “Mark”) in a number of countries, including the following:
- International trademark No. 885912 for G4S (word mark) in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45, registered on October 11, 2005;
- European Union Trade Mark No. 015263064 for G4S (word mark) in classes 6, 36, and 37, registered on September 20, 2016;
- United States trademark No. 3378800 for G4S (word mark) in classes 9, 39, and 45, registered on February 5, 2008.
Complainant registered its domain name <g4s.com> on December 1, 1999. In addition, Complainant has registered a number of country-specific domain names, including <g4s.cn> (registered on March 1, 2005), <g4s.co> (registered on February 25, 2010), <g4s.in> (registered in March 2, 2005) and <g4s.us> (registered on November 17, 2004).
Respondent, identified only as “Thiago07 10messi”, registered the Domain Name on March 26, 2018. The Domain Name resolves to a website purporting to provide information on Complainant’s employee portal, known as “g4s ess”, and inviting visitors to click on a link to access Complainant’s employee portal at “www.ess.myg4s.com”.
Complainant had notified Respondent of fraudulent content on the website to which the Domain Name resolved, requesting said Respondent to transfer the Domain Name to it.
5. Parties’ Contentions
In relation to the first element, Complainant states that the Domain Name is confusingly similar to Complainant’s trademark G4S, for which Complainant has been granted trademark registrations in different jurisdictions starting from 2005, whereas the Domain Name was registered by Respondent on March 26, 2018. Complainant asserts goodwill and reputation that has accrued in the G4S brand, and that this brand is used only in relation to Complainant’s goods and services. Numerous previous UDRP panels have recognized the distinctive nature of the G4S mark in relation to Complainant’s goods and services. The Domain Name wholly incorporates Complainant’s mark, with the addition of the abbreviation “ess”, which stands for “Employee Self-Service,” which does not diminish the confusing similarity between the Mark and the Domain Name. The generic Top-Level Domain (“gTLD”) “.xyz” should be disregarded as it is merely a technical requirement for domain names.
In relation to the second element, Complainant contends that Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not a licensee of or otherwise affiliated with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name. Respondent is not commonly known by the Domain Name or by the name “g4s”, having not registered any such trademark. Respondent cannot come within any of the exceptions under paragraph 4(c) of the Policy to justify a legitimate interest in the use of the Mark in a domain name. The Domain Name resolves to a website labeled as “G4S ESS Login,” referring to an employee online portal. Respondent therefore is impersonating Complainant or pretending to be associated with Complainant, and the website has been set up for that purpose rather than in relation to a bona fide offering of goods or services. The website appears to be either a means of generating click-through revenue and/or a phishing scheme, neither of which can constitute a legitimate interest. There is no evidence that Respondent is making a legitimate noncommercial fair use of the Domain Name.
In relation to the third element, Complainant alleges that that Domain Name was registered and is being used in bad faith.
In relation to bad faith registration, according to Complainant, the Mark has been actively used for over 14 years and predates the registration of the Domain Name by 13 years. The trademark registrations of the Mark can be readily viewed online, and the Mark is well known in the United Kingdom, the United States and elsewhere around the world. Respondent established the website soon after registration of the Domain Name. The Domain Name contains Complainant’s Mark together with “ESS” (“Employee Self-Service”), which is prima facie evidence of an abusive registration. Complainant asserts that it is clear that Respondent knew or at least was aware of Complainant’s goodwill and reputation, and failed to respond to multiple cease-and-desist notices from Complainant. There is no evidence that Respondent has been commonly known by the Domain Name or is making legitimate fair use of the Domain Name.
In relation to bad faith use of the Domain Name, Complainant submits that the Domain Name incorporates a trademark with the addition of words that connect the Internet user to Complainant’s trademark, which is a false association with Complainant’s Mark, causing confusion among Internet users seeking Complainant’s employee self-service portal. Respondent has intentionally attempted to attract Internet users to its website, although Respondent is neither affiliated with nor endorsed by Complainant. Respondent’s Domain Name is a top result in search engines such as Google, further showing that Internet users are confused by the Domain Name. Finally, Respondent has attempted to conceal his or her identity by entering false WhoIs contact details.
All the above demonstrate bad faith registration and use of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the mark G4S, through trademark registrations in at least in the United States, the European Union, and internationally, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name <g4sess.xyz> wholly incorporates Complainant’s Mark. The addition of the letters “ess” does not prevent a finding of confusing similarity under the first element, and (see WIPO Overview 3.0, section 1.8). Moreover, the content of the website to which the Domain Name resolves supports a finding of confusing similarity (see WIPO Overview 3.0, section 1.7). It is the consensus view of UDRP panels that the addition of a gTLD to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name or is pursuing a legitimate business activity under this name. Complainant’s rights in the trademark predate the registration of the Domain Name by many years.
The Domain Name contains Complainant’s Mark along with the letter sequence “ess,” which tends to suggest sponsorship or endorsement by the trademark owner and therefore is incompatible with a finding of fair use. See WIPO Overview 3.0, section 2.5.1.
The Domain Name resolves to a website that contains information on Complainant’s Employee Self-Service website, falsely suggesting affiliation with Complainant. In particular, the content of the website does not clearly indicate to users that Respondent is unaffiliated with Complainant. Such use cannot support a finding of legitimate rights. See WIPO Overview 3.0, section 2.5.3.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s trademark.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith. As previous UDRP panels have found, Complainant’s Mark is distinctive and has acquired significant goodwill. (See, for instance, G4S Plc. v. Patrick Abbey, WIPO Case No. D2017-1505; G4S Plc. v. Decrypter Crons, WIPO Case No. D2017-1442; G4S Plc. v. Luo Ren Cai, WIPO Case No. D2017-1446; G4S Plc. v. Zhichao Yang, WIPO Case No. D2017-1396; G4S Plc. v. Noman Burki, WIPO Case No. D2016-1383; G4S Plc. v. Sikko van der Donk, WIPO Case No. D2016-0650).
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of attracting Internet users seeking information about Complainant’s services. Complainant’s use of its Mark predates the registration of the Domain Name by more than 10 years. The Domain Name contains the Mark in its entirety. The addition of the letters “ess” and the gTLD “.xyz” provide additional evidence of Respondent’s intentions to create the appearance of association with Complainant. There can be no question that Respondent chose the Domain Name in full awareness of this Mark and for the purpose of attracting Internet users for its own commercial gain.
The Domain Name resolves to active website that displays use of Complainant’s Mark and information on Complainant’s internal portal. Such a website could plausibly be a phishing website or a website intended for other activities for the benefit of Respondent. In the absence of any evidence to the contrary, such activities demonstrate bad faith.
Respondent’s concealing of its identity, and its failure to submit a response or to provide any evidence of actual or contemplated good faith use, further demonstrate bad faith.
The totality of the circumstances, supported by the evidence supplied by Complainant, demonstrate bad faith wherein Respondent has intentionally attempted to capitalize on Complainant’s trademark rights in pursuit of an illegitimate business enterprise. See WIPO Overview 3.0, section 3.1.
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, <g4sess.xyz>, be transferred to Complainant.
Date: May 22, 2019