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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G4S Plc. v. WhoisGuard, Inc. / Simon Cartwright

Case No. D2019-1198

1. The Parties

The Complainant is G4S Plc., United Kingdom, represented by SafeNames Ltd., United Kingdom.

The Respondent is WhoisGuard, Inc., Panama / Simon Cartwright, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <g4s-group.org> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2019. On May 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 29, 2019.

The Center verified that the Complaint together with the amended 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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2019.

The Center appointed Ian Lowe as the sole panelist in this matter on July 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

The Complainant is a British security services company founded in 1901 that has traded under its current name “G4S” since 2004 when the two companies Group 4 Flack and Securicor merged. It provides security products, services and solutions across six continents, employing over 585,000 people worldwide, with operations in over 100 countries. Its revenue for the year 2017 was GBP 7.8 billion. Its official website is at “www.g4s.com”.

The Complainant is the proprietor of a substantial number of registered trademarks comprising G4S including International trademark registration number 885912 G4S registered on October 11, 2005 designating over 20 territories including the United States of America, and European Union trademark number 15263064 G4S registered on September 20, 2016.

The Domain Name was registered on February 19, 2019 through a privacy service. It does not resolve to an active website. The Respondent did not respond to a cease-and-desist letter sent on behalf of the Complainant in March 2019. The Respondent’s address as provided by the Registrar is incomplete and its stated contact telephone number comprises too many digits.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its G4S trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the G4S trademark (the “Mark”), both by virtue of its several trademark registrations around the world and as a result of the substantial goodwill and reputation acquired through its widespread use of the Mark over some 15 years. Ignoring the generic Top-Level Domain (“gTLD”) “.org”, the Domain Name differs from the Mark only by the addition of the word “-group”. In the view of the Panel, this addition does not detract from the confusing similarity between the Mark and the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, but rather has apparently made no active use of it. “G4S” is a distinctive abbreviation for “Group 4 Securicor” and the Panel cannot conceive of any legitimate use to which the Respondent could put the Domain Name.

The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. It made no response to a cease-and-desist letter. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Although the Respondent has apparently made no active use of the Domain Name, section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. It depends on the facts of the case, and relevant factors include (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In this case, as noted above, the Panel considers that it is almost impossible to conceive of any good faith use to which the Domain Name could be put and that all of the cited factors support a finding of bad faith registration and use. The overwhelming inference is that the Respondent registered the Domain Name with a view to attracting Internet users by creating a likelihood of confusion with the Complainant’s G4S mark.

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.

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 Domain Name, <g4s-group.org> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: July 21, 2019

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