WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G4S Plc v. Tan Fei Tan

Case No. D2020-2346

1. The Parties

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

The Respondent is Tan Fei Tan, China.

2. The Domain Name and Registrar

The disputed domain name <g4sgp.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2020, 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 September 18, 2020.

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 September 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on October 27, 2020. 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 the registered owner of the following trademarks:

(1) G4S, International Registration, registration No. 885912 registered on October 11, 2005.

(2) G4S, Benelux, registration No. 766792 registered on June 3, 2005.

(3) , European Union, registration No. 004645297 registered on May 15, 2007.

(4) , United Kingdom, registration No. UK2391942 registered on March 17, 2006.

(5) G4S, European Union, registration No. 015263064 registered on September 20, 2016.

(6) G4S, United States of America, registration No. 3378800 registered on February 5, 2008.

(7) , United States of America, registration No. 3378798 registered on February 5, 2008.

The Complaint has been trading under its current name “G4S” since 2004 as a result of a merger between Danish company Group 4 Flack and Securicor. The Complainant is a multinational company that provides security products, services and solutions. The Complainant’s brand G4S has been used in trade since 2004 and has been registered as a trademark since 2005.

The Complainant registered its official website “www.g4s.com” on December 1, 1999. The Complainant has further registered its trademark in country code Top-Level Domains (ccTLDs), which enables Internet users to access its services, using in their local Top-Level Domain (“TLD”). A non-exhaustive list of the Complainant’s ccTLDs can be seen below:

<g4s.cn> - registered March 1, 2005;
<g4s.co> - registered February 25, 2010;
<g4s.cz> - registered January 27, 2003;
<g4s.in> - registered March 2, 2005;
<g4s.us> - registered November 17, 2004.

The Respondent registered the Disputed Domain Name on July 28, 2020. The Disputed Domain Name resolves to a website that advertises pornographic content and links to online betting websites.

A cease and desist letter was sent by the Complainant’s representatives on August 6, 2020, to which the Respondent did not respond.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the G4S marks in which the Complainant has rights.

The Complainant has obtained several trademarks for the term “G4S” in different jurisdictions before the Respondent registered the Disputed Domain Name <g4sgp.com>. The G4S trademarks have been active for over 10 years and the distinctive value of the “G4S” term have been recognized by UDRP panels in previous cases.

The Disputed Domain Name is confusingly similar to the Complainant’s marks because it adopts the Complainant’s G4S trademark in its entirety. The Disputed Domain Name only adds the non-distinguishing descriptors “gp” and generic Top-Level Domain (“gTLD”) “.com” to the Complainant’s marks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent has no intellectual property rights, or legitimate interests, in the Disputed Domain Name. The Respondent has not received any license from the Complainant to use a domain name which features the G4S trademark. All active trademarks of the “G4S” term are held by the Complainant.

The Complainant submits there is no bona fide offering of goods or services attached to the Disputed Domain Name. The Disputed Domain Name is used by the Respondent to host a website which is unrelated to the Complainant and displays pornographic content and external links to online betting websites. The Respondent is attempting to take advantage of the Complainant’s trademark by using a similar domain name to redirect Internet users to a website which advertises pornographic content.

The Respondent is not known, nor has been known as “G4S”. The G4S trademark is distinctive and not used in commerce other than by the Complainant.

The Respondent is not making a legitimate noncommercial use of the Disputed Domain Name. The fact that the Disputed Domain Name redirects to several links and pornographic content shows the Respondent intends to generate commercial gain through misleading Internet users.

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

The G4S trademarks have been active for over 10 years and predate the registration of <g4sgp.com> by 15 years from the earliest trademark registration. To date, results on Google for the term “G4S” lists the Complainant’s brand and services as the first results.

a cease and desist letter was sent by the Complainant’s representatives on August 6, 2020. The Respondent chose not to respond. The Complainant submits that this is evidence of bad faith.

The Complainant submits that the Respondent has engaged in a pattern of bad faith conduct, preventing owners of trademarks from reflecting their marks in corresponding domain names. The Respondent holds a domain portfolio of up to 216 domain names, including domain names like <nikereactshoes.com>.

The Respondent’s use of the Disputed Domain Name to redirect Internet users intending to land on the Complainant’s website to the pornographic content is considered tarnishment for commercial gain. In view of the foregoing, the Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Language of Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Registration Agreement for the Disputed Domain Name is in English. The Complaint has been filed in English and the Panel decides that the language of the proceeding be English.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

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

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

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

A. Identical or Confusingly Similar

The Complainant alleges that the Disputed Domain Name is confusingly similar to its G4S series marks.

The Complainant has established that it is the owner of the G4S series marks.

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

“The applicable gTLD ‘.com’, may be disregarded for the purpose of assessment under the first element, as it is viewed as a standard registration requirement.” (Facebook, Inc v S. Demir Cilingir, WIPO Case No. D2018-2746.)

By applying the identical or confusing similarity test under the Policy, which involves a side-by-side comparison of the domain name and the textual components of the relevant trademark, the Panel finds that the Disputed Domain Name consists of the Complainant’s G4S mark in its entirety, the letters “gp” and the gTLD “.com”. The Panel finds that the addition of “gp” and “.com” does not avoid the confusing similarity between the Disputed Domain Name and the Complainant’s trademarks.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has established that it is the owner of the G4S trademarks, and there is no evidence to show that the Respondent has received any license or authorization from the Complainant to use a domain name which features the G4S trademark.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. However, the Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name.

From the screenshots of the Disputed Domain Name provided by the Complaint, the Panel finds there is no actual use of “g4sgp” or any similar word on the Respondent’s website except for the Disputed Domain Name itself. No evidence has been submitted to show that the Respondent is commonly known by the Disputed Domain Name as demonstrated in paragraph 4(c) of the Policy.

The Respondent is using the Disputed Domain Name to attract Internet users to a website that advertises pornographic content and links to online betting websites. There is no evidence indicating that the Disputed Domain Name is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.

The Panel finds that G4S trademarks have been active for more than 10 years and predate the registration of <g4sgp.com> by 15 years from the earliest trademark registration. The Complainant registered its official website <www.g4s.com> on December 1, 1999. According to the information provided by the Registrar, the Respondent is located in China. The Complainant has also registered <g4s.cn> on March 1, 2005, for consumers in China and such registration predates the registration of the Disputed Domain Name by 15 years. Furthermore, the search results on Google for the term “G4S” lists the Complainant’s brand and services as the first result.

Having considered the above facts, the Panel finds that the Respondent has recognized “g4s” as a trademark owned by the Complainant before registering the Disputed Domain Name. And there is no evidence showing a good faith use by the Respondent of the “g4s” or “g4sgp” relative words. The Disputed Domain Name was registered in an attempt to attract Internet users for commercial gain.

Paragraph 4(b)(iv) of the Policy indicates that if the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, such conduct shall be considered as an evidence of bad faith registration and use.

Furthermore, “bad faith under the Policy may very well arise where a domain name, which infringes on the mark of another by virtue of being identical or confusingly similar to that mark, is used by a respondent as an instrumentality to intentionally link and direct unsuspecting users, who seek information on a good or service associated with that mark, to a pornographic site instead. In such instances, those users would not be exposed to a respondent’s pornographic content but for that linkage” (Sound Unseen, Ltd; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636).

The Disputed Domain Name is confusingly similar to the Complainant’s G4S trademarks. The Respondent uses the Disputed Domain Name to attract unsuspecting Internet users who seek information of the service associated with the Complainant’s G4S trademarks to the Respondent’s pornographic website which also advertises online betting websites. The Panel finds such act of “pornosquatting” to be an instance under paragraph 4(b)(iv) of the Policy.

Further, a lack of a reply to a cease and desist letter prior to commencing the proceedings supports a finding of bad faith (Facebook, Inc. and Instagram, LLC v. C W / c w, c w, WIPO Case No. D2018-1159). The Complaint has sent a cease and desist letter to the Respondent prior to filing of the Complaint. And there is no evidence showing the Respondent has made any response to the cease and desist letter. The Panel finds that such fact should be considered as evidence of bad faith.

Moreover, paragraph 4(b)(ii) of the Policy outlines that if the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct, such act infers bad faith registration and use. According to the Annex 19 provided by the Complainant, the Respondent has registered more than 200 domain names including domain names incorporating third parties’ famous trademarks like <nikereactshoes.com>. The Panel finds that such conduct shows a pattern of domain name registration preventing the owner of the trademark from reflecting the trademark in a corresponding domain name.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <g4sgp.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: November 10, 2020