WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G4S Plc. v. Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf / Encio Baron, Encio Gen Maint and Cleaning Services

Case No. D2021-1200

1. The Parties

The Complainant is G4S Plc., United Kingdom, represented by SafeNames Ltd., United Kingdom (“UK”).

The Respondent is Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf, Iceland / Encio Baron, Encio Gen Maint and Cleaning Services, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <gs4group-ae.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, 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 April 26, 2021, 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 April 26, 2021. On April 23, 2021, the Center sent an email communication regarding the expiry of the disputed domain name. To that end, the Center received information that the disputed domain name is under lock, and will remain locked during proceedings. In order to continue proceedings, Complainant or Respondent need to renew the disputed domain name.

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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. An email communication from Respondent was filed with the Center on April 27, 2021. The Center notified the commencement of panel appointment process on May 20, 2021.

The Center appointed Martin Schwimmer as the sole panelist in this matter on May 26, 2021. 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, G4S Plc., is a British security services company, founded in 1901, that has traded under its current name “G4S” since 2004 when two companies, Group 4 Flack, and Securicor merged.

The Complainant provides security products, services in over 85 countries, including the United Arab Emirates. It asserts it is the largest security solutions provider in the world.

The Complainant owns various trademark registrations (the “Trademark”) for the G4S trademark including International Registration 885912, registered on November 11, 2005, and European Union Trademark (“EUTM”) No. 015263064, registered on September 20, 2016. It owns registrations for a logo version of the Trademark including EUTM 004645297, registered on May 15, 2007, and United States of America trademark registration no. 3378798, registered on February 5, 2008.

The Respondent is Encio Baron, Encio Gen Maint & Cleaning Services, of the United Arab Emirates.

The disputed domain name, <gs4group-ae.com>, was registered on May 18, 2020, and was used for a website purporting to offer security services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts it is the largest provider of security solutions in the world. It is publicly traded on the London and Copenhagen Stock Exchanges, generating GBP 7.8 billion in 2019.

The Complainant has been trading under its current name G4S since 2004 when the Danish company Group 4 Flack merged with the UK company Securicor. The Complainant owns various trademark registrations for the G4S trademark including International Registration 885912, registered on November 11, 2005, and European Union Trademark (“EUTM”) No. 015263064, registered on September 20, 2016. It owns registrations for a logo version of the Trademark including EUTM 004645297, registered on May 15, 2007, and United States of America trademark registration no. 3378798, registered on February 5, 2008.

The Complainant owns various domain names reflecting the Trademark, including <g4s.com> and <g4s.ae>.

The Complainant promotes its services at various websites, including “www.g4s.com”. The Complainant utilizes “country sites” to target specific markets, such as “www.g4s.com/en-ae”, which targets the United Arab Emirates.

Previous panels have recognized the distinctiveness of the Complainant’s Trademark, including G4S Plc v. Thomas Roberts, WIPO Case No. D2020-0159; G4S Plc v. Martha Klif, WIPO Case No. D2020-0158; G4S Plc v. Le Van Quyen, WIPO Case No. D2019-2651; G4S Plc v. Fred Lam, WIPO Case No. D2019-2539; and G4S Plc v. Jay Hauser, WIPO Case No. D2019-2234.

The disputed domain name <gs4group-ae.com> is confusingly similar to the Complainant’s trademark. The Respondent swapped the letter “s” and the number “4” from the trademark G4S and added the terms “group” and “ae”. Both terms are in direct reference to the Complainant as the “G4S” brand derives from the name “Group 4”. Furthermore, “ae” is the ISO code for the United Arab Emirates, and “.ae” is the country-code Top-Level Domain (“ccTLD”) pertaining to the United Arab Emirates, where the Complainant operates.

Though the letter “s” and number “4” are swapped in the disputed domain dame, it does not negate confusion in the mind of Internet users. It has been recognized in past UDRP decisions that even omitting one letter in a three-letter trademark does not prevent a finding of confusing similarity, especially if there is clear evidence of targeting. In the case of G4S Plc v. Richard Otabil, Engrid Media, WIPO Case No. D2020-3200, which concerned the domain name <g4logistic.com>, the panel held that “. . . here, Complainant’s G4S mark is almost fully incorporated in the disputed domain name. The deletion of the letter “s” and the inclusion of the dictionary term “logistic” in the disputed domain name does nothing to prevent a finding of confusing similarity under the first element. Furthermore, Complainant submitted evidence that the website to which the disputed domain name resolves advertises services that are similar to those offered by the Complainant under its G4S mark, and that the Respondent registered the disputed domain name specifically because of its similarity to the Complainant’s Mark in order to perpetrate fraud.

The Respondent is not making a bona fide use of the disputed domain name. The disputed domain name <gs4group-ae.com> at the time of the Complaint, resolved to an active website (the “Website”), where the Respondent impersonates the Complainant to try to make Internet users believe that the website is endorsed or affiliated with the Complainant (Annex 13 of the Complaint). The Respondent uses the Complainant’s colors; red, black and white, and mention the “GS4 Group of Companies”. The Respondent uses a logo very similar to the Complainant in its layout and color scheme. Several of the Website’s links are not currently in operation, which shows that the Respondent is not offering services in good faith.

This use by the Respondent is neither a legitimate noncommercial use, nor a fair use of the disputed domain name. The Respondent’s use of the disputed domain name to impersonate the Complainant and potentially steal Internet users’ information, is a fraudulent activity, and clearly cannot constitute fair use. Additionally, the Respondent has used the Website to misleadingly deceive the Complainant’s potential customers into thinking it is associated with the Complainant, using a very similar logo. The Respondent’s conduct is clearly commercial in nature, and its potential illegitimate collection of the Complainant’s current or prospective customers’ personal data enables it to perpetuate fraudulent activity.

On the Website, the Respondent purported to offer security services, which is the main sector the Complainant operates in. A respondent’s attempt to impersonate the Complainant has led panels, in previous cases, “to the conclusion that the Respondent attempted to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use of the disputed domain name” (See Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Tayler Boyer, WIPO Case No. D2016-2587).

The disputed domain name carries a high risk for phishing as Internet users can enter personal and sensitive information onto the Website, which is considered fraudulent. Under the Policy, using a domain name for illegal activity cannot amount to a demonstration of legitimate interests and this principle has been backed up by numerous UDRP decisions such as Virgin Enterprises Limited, VLE Limited v. Randy Couture, WIPO Case No. D2019-0016, where the panel held that “the use of a domain name for illegal activity, such as impersonation, or other types of fraudcan never confer rights or legitimate interests on a respondent.”

The Respondent’s actions of setting up a website looking similar to the Complainant and impersonating the Complainant shows that the disputed domain name was registered in bad faith with the primary intention of taking advantage of the goodwill and reputation of the G4S brand.

B. Respondent

After the filing of the original Complaint, the Center notified the Respondent, who sent an email to the Center (the “Email”), which stated in its entirety: “i don’t know what is this? that company gs4 didn’t pay for the domain and hosting im also running with them how can i help on this?” (sic). Treating this as an informal response to the Complaint, the Email reads as an assertion that the Respondent is a hosting provider and is holding the disputed domain name of a client that didn’t pay it.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has identified through its trademark registrations such as International Registration 885912 and EUTM 015263064 that it owns the GS4 trademark. The Complainant has also demonstrated use of the Trademark at the website “www.g4s.com”.

The disputed domain name combines a transposition of the Complainant’s G4S mark, the word “group” and the geographical abbreviation “ae”. These additions do not prevent the Trademark from being recognizable in the disputed domain name. Moreover, as stated above, both terms refer to the Complainant. The G4S brand derives from the name “Group 4” while “ae” is the ISO code for the United Arab Emirates and “.ae” is the ccTLD pertaining to the United Arab Emirates, where the Complainant operates. Furthermore, the disputed domain name has been used for a website purporting to offer security services, which indicates that the disputed domain name was registered with the Complainant’s mark in mind and affirms the confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Trademark for the purpose of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized the use of its mark in any capacity. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the disputed domain name. The use of the disputed domain name is commercial so it cannot constitute a legitimate noncommercial or fair use.

As discussed further below, as evidenced by print-outs of the Website provided by the Complainant (as the disputed domain name is not resolving at the time of this decision), the Website at the disputed domain name has been used to offer purported security services. Moreover, the Complainant alleges the existence of a MX record in connection with the disputed domain name, indicating that the disputed domain name can be used to send and receive email, perhaps as part of a phishing scheme. These allegations are unrebutted by the Respondent. In the circumstances, the Panel finds that the use of the disputed domain name cannot amount to a bona fide offering of goods and services.

The Panel finds that the Respondent does not have rights or a legitimate interest in the disputed domain name and that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant is a London-based security company that does business in the United Arab Emirates and owns several figurative registrations of the Trademark.

Considering the references on the Website at the disputed domain name to the Complainant’s Trademark, its logo, and its field of activity, the Panel finds that the disputed domain name targets the Complainant and its goodwill in its Trademark.

The Respondent appears to assert without documentation in its Email to the Center, that it is a hosting company, and that a company named GS4 was its customer. No further information is provided by the Respondent with regard to such a company.

The absence of documentation or verifiable information provided by the Respondent makes it difficult for the Panel to credit its assertions. Furthermore, the Registrant Organization is identified as Encio Gen Maint and Cleaning Services, suggesting that it is not in fact a web hosting company. Rather, the email is consistent with the Respondent’s prior use of a privacy service to register the name originally – in that the true Respondent continues to seek to conceal its identity in bad faith. Accordingly, the Panel does not credit the Email.

Even if the Panel were to assume that the Respondent registered the disputed domain name for someone else, and is not the creator of the content on the Website – the Panel’s determination would be unchanged. The Respondent remains the named registrant. As such, it is responsible for any use of the disputed domain name.

Accordingly, the use of the disputed domain name demonstrates a clear intent to target and to capitalize on the goodwill associated with the Complainant. The use of the disputed domain name to divert Internet users to the Website by exploiting the confusing similarity between the disputed domain name and the Trademark is use in bad faith. Consequently, Internet users are likely to be misled by the disputed domain name, as when they access the website, an average Internet user may at first glance think that the disputed domain name is either endorsed or affiliated with the Complainant.

Furthermore, as noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 3.1.4, the “use of a domain name for per se illegitimate activity such as […] phishing […] is manifestly considered evidence of bad faith.” The Website has a page where personal and sensitive data can be collected. Moreover, the disputed domain name has MX records set up to it, which means that there is a higher risk that the Respondent used or will use the disputed domain name for fraudulent activity utilizing email. In past UDRP decisions, panels held that “ the active MX records, and the composition of the disputed domain name support that the Respondent may be attempting to pass off as the Complainant and potentially request sensitive information from the Complainant’s customers, which could be deemed fraudulent conduct” (see Citrix Systems, Inc. v. WhoisGuard, Inc. / John Gold, WIPO Case No. D2021-0228). The fact that the disputed domain name is not currently resolving to an active website does not prevent a finding of bad faith.

The Panel finds that the disputed domain name was registered and 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 disputed domain name, <gs4group-ae.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: June 9, 2021