WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc. v. Jurgen Neeme
Case No. D2021-2036
1. The Parties
The Complainant is G4S Plc., United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Jurgen Neeme, Estonia.
2. The Domain Name and Registrar
The disputed domain name <g4s.club> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant and providing the contact details; and
(c) the language of the registration agreement is English.
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 July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13. 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 27, 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 provides security services. It was originally established in the United Kingdom in 1936 but has been trading under the name and trademark G4S since 2004 following the merger of the Danish company Group 4 Flack with Securicor. It had already registered the domain name <g4s.com> in 1999.
These days, the Complainant provides security services and products across six continents. It employs over 500,000 people and has operations in 85 different countries. According to its websites at “www.g4s.com” and <g4s.ee>, the countries in which it operates include Estonia.
In 2019, the Complainant had revenues totalling GBP 7.7 billion up from GBP 7.5 billion in 2018.
The Complainant’s Facebook page “@G4s” has over 370,000 followers; its LinkedIn page has over 570,000 followers; it also has 21,000 followers on Twitter and 16,000 followers on Instagram.
The Complaint includes evidence that the Complainant has numerous registered trademarks for G4S including in the European Union, the United Kingdom, and the United States of America. For present purposes, it is sufficient to note:
(a) International Registration No. 885912, G4S, in respect of a wide range of goods and services in International Classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45 which was registered on October 11, 2005;
(b) European Union Trademark No. 004613378, G4S, in respect of goods and services in International Classes 9, 39, and 45 which was registered on March 14, 2007, having been filed on September 26, 2005;
(c) United States of America Trademark No. 3,378,800, G4S, in respect of a range of goods and services in International Classes 1, 6, 16, 35, 36, 37, 38, 41, 42, and 44 which was registered on February 5, 2008, in the Principal Register; and(d) European Union Trademark No. 015268113, G4S (figurative) in respect of goods and services in International Classes 6, 36, and 37 which was registered on September 20, 2019.
According to the Registrar, the Respondent registered the disputed domain name on May 15, 2021.
When the Complaint was filed, the disputed domain name resolved to a parking page (Annex 13) which consisted of pay-per-click (“PPC”) links for services advertising “Security Guard”, “Security Guard Companies”, “Security Guard Jobs”, “Security Guard Training”, and “Guard”. There was also a link to “Buy this domain” which linked through (Annex 18) to the Uniregistry domain brokerage service.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under the Rules, paragraph 11, the language of the proceeding is the language of the Registration Agreement unless otherwise agreed between the parties or provided in the Registration Agreement. The Panel does have a discretion also to determine otherwise having regard to all the circumstances of the case. In exercising that discretion, the Panel must exercise its powers in accordance with the Rules paragraph 10 including, in particular, ensuring that the parties are treated equally and given a fair opportunity to present their respective cases.
In the present case, the Registration Agreement is in English as is the website to which the disputed domain name resolves. In these circumstances, there is no basis to depart from the default rule.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks for G4S including those identified in Section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. Those considerations do not apply in the present case.
Disregarding the “.club” gTLD, therefore, the disputed domain name consists of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
As the website to which the disputed domain name resolved consists of PPC advertising links, it does not qualify as a legitimate noncommercial or fair use under the Policy. See e.g. WIPO Overview 3.0, section 2.5.3.
According to the Complainant, the PPC links take the browser through to advertisements for providers of competing security services. The use of the Complainant’s trademark in the disputed domain name in this way, therefore, is seeking to capitalise on the reputation and goodwill in the Complainant’s trademark and does not constitute an offering of goods or services in good faith under the Policy. See e.g. WIPO Overview 3.0, section 2.9.
The website does include a purported disclaimer:
“The Sponsored Listings displayed above are served automatically be a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner direction (contact information can be found in whois).”
However, the Respondent as the domain holder is responsible for how it is used. Accordingly, it is well-established that a respondent cannot rely on such a self-serving disclaimer to escape liability under the Policy in the absence of demonstrated positive steps to prevent the display of PPC links to competing services. See e.g. WIPO Overview 3.0, section 3.5 (in the context of the third element).
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant points out that it has been using its trademark for over 15 years on what is essentially a global scale. It contends therefore that its trademark is very well known. Numerous UDRP panels in prior proceedings have accepted that contention. Those decisions do not bind the Panel but consistency of outcome is an important outcome. To the extent that the previous decisions did not involve a respondent located in Estonia, the Panel notes that the Complainant is in fact carrying on business under its name and trademark in Estonia.
In addition, it appears that the Respondent is the registrant of more than 20,000 other domain names. These include names such as <prosegur.cm>, <searchindeed.com>, <efacebook.cm>, and <paypal.mr>. These also involve very well-known trademarks. Moreover, Prosegur is a large, multinational security services firm.
The Respondent has also been found to have registered domain names in bad faith in at least 11 previous decisions. In Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, firstname.lastname@example.org and Jay Neeme, WIPO Case No. D2019-1582, the panel amongst other things found:
“in multiple previous decisions under the Policy, the Respondent, Jurgen Neeme, has been found to have made bad faith registrations and use of domain names that were identical or confusingly similar to known trademarks (see, e.g., Verizon Trademark Services LLC v. Juergen Neeme, TheDomain.io, WIPO Case No. D2018-1125). The Panel finds that this pattern of conduct evidences bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy.”
The Panel notes that the domain names at issue in that proceeding were all offered for sale through the Uniregistry services as in this proceeding although, in that case, an offer price was specified.
“G4S” is of course a three letter alphanumeric string. It does not appear to the Panel, however, as being so readily capable of being an acronym for many different companies or things as is the case with many three letter acronyms. Rather, it appears to have significance and commercial recognition as the Complainant’s name and trademark.
Having regard to these matters, it appears likely that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademark.
The way the disputed domain name is being used – to generate PPC links to businesses in competition with the Complainant – constitutes use in bad faith under the Policy. Given the nature of the trademark, its wide recognition and the short time the disputed domain name has been registered, it appears more than likely that the Respondent registered the disputed domain name for the purpose for which he used it. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
The Panel would also find, as the Complainant contends, a further basis for that conclusion in that the Respondent has engaged in a pattern of abusive registrations. See e.g. WIPO Overview 3.0, Section 3.1.2.
Accordingly, the Complainant has established all three requirements under 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 <g4s.club> be transferred to the Complainant.
Warwick A. Rothnie
Date: September 10, 2021