WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G4S Plc v. Contact Privacy Inc. Customer 12410517454 / [Name Redacted]
Case No. D2021-2711
1. The Parties
The Complainant is G4S Plc, United Kingdom, represented by Safenames Ltd., United Kingdom.
The Respondent is Contact Privacy Inc. Customer 12410517454, Canada / [Name Redacted], United Kingdom.
2. The Domain Name and Registrar
The Disputed Domain Name <ukg4splc.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2021. On August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 19, 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 August 25, 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 August 27, 2021.
In its amended Complaint, the Complainant asked that for the name that had been disclosed by the Registrar to be redacted from the record upon publication of the decision on the ground that the Respondent has engaged in identity theft. The Complainant complains that the registrant of the Disputed Domain Name registered that name in the name of one of the Complainant’s employees. The Complainant avers that that employee has had nothing to do with the registration. The Complainant has referred the Panel to BDR Thermea Group B.V. v. [Name Redacted], Domain Privacy / Komatsu, Nice IT Services Group Inc., WIPO Case No. D2020-1652 where an application for redaction was granted on the ground that there had been identity theft.
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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center appointed Jane Lambert as the sole panelist in this matter on October 4, 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 is the world’s leading global, integrated security company with over 530,000 employees and operations in around 85 countries. It offers a diverse range of goods and services, broadly divided across four principal themes: “Security Solutions”, “Cash Solutions”, “Consulting Services” and “Care and Justice Services”. Its revenue for 2019 was GBP 7.8 billion which was 3.4% more than in the previous year.
The Complainant was formed by the amalgamation of the Swedish company Group 4 Falck and the English company Securicor in 2004. It has traded under the G4S sign ever since.
By reason of the scale of its business, the public and trade throughout the world are likely to associate that sign in relation to the above mentioned goods and services with the Complainant and none other.
The Complainant has also registered the sign in stylized lettering and/or plain text as international, regional and national trade marks throughout the world. For example, the characters “G4S” have been registered as an international trade mark for goods and services in classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44, and 45 under registration number 885912 since October 11, 2005.
The Complainant has websites in important markets. In some, it combines its trade mark with the country code of the market to create a domain name that members of the public associate with the Complainant’s business in that country. For example, the domain name for its Czech website is <g4s.cz>.
Nothing is known of the registrant of the Disputed Domain Name other than that person’s registration in what appears to be a false name and its use of a privacy service.
5. Parties’ Contentions
The Complainant asks for the Disputed Domain Name to be transferred to it on the following grounds:
- The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name was registered and is being used in bad faith.
In relation to the first ground, the Complainant refers to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states:
“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”
The Complainant draws the Panel’s attention to its numerous trade mark registrations including the international trade mark mentioned above and also the reputation and goodwill likely to accrue to the G4S sign by reason of the business conducted under that sign. In addition, the Complainant relies on G4S Plc v. Noman Burki, WIPO Case No. D2016-1383, where the panel expressed the view that “G4S, is inherently distinctive and is likely to have acquired further distinctive character through the use of the Complainant’s G4S Mark by the Complainant” and similar decisions. It notes that the Disputed Domain Name incorporates the Complainant’s trade mark in its entirety and combines it with the letters “uk” which is the conventional abbreviation of the United Kingdom, and “plc”, an abbreviation for “public limited company”. Taking account of all those factors, it submits that the Disputed Domain Name is confusingly similar to the trade mark in which the Complainant has rights.
With regard to the second ground, the Complainant contention that following the submissions made in this section of the Complaint, the burden will shift to the Respondent to put forward evidence to show that it has a right or legitimate interest in the Disputed Domain Name. That contention appears to refer to the second sub-paragraph of section 2.1 of the WIPO Overview 3.0.
The Complainant says that to the best of its knowledge, the Respondent has not registered G4S or “ukg4splc” as trade marks. It cannot find any evidence to suggest that the Respondent has any right of action to prevent others from using G4S or “ukg4splc”. It denies that the Complainant has licensed the Respondent to register any domain name consisting of or incorporating its G4S trade mark. None of the circumstances in paragraph 4(c) of the Policy appears to apply to this case.
The Complainant concludes that it has presented a prima facie case that the Respondent lacks any right or legitimate interest in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy and that the burden of proof now shifts to the Respondent to show that it has a right or legitimate interest in the Disputed Domain Name.
As for the third ground, the Complainant quotes the first sentence of section 3.1 of the WIPO Overview 3.0. It states that the Complainant had registered its trade marks well before the Respondent registered the Disputed Domain Name. It complains that the Respondent failed to reply to its pre-action correspondence and submits that such failure to respond is an act of bad faith in itself (Sanofi v. Domain Administrator, See PrivacyGuardian.org / onlinestore, willam jhonson, WIPO Case No. D2019-2846). Referring to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it points out that passive holding can amount to bad faith. Finally, it contends that the registration of the Disputed Domain Name in the name of one of the Complainant’s employees indicates that the Respondent is up to no good.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The following provisions are incorporated by reference into every contract for the registration of a domain name including the contract for the registration of the Disputed Domain Name:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly Similar
The first element is present.
The Complainant has registered the characters G4S as an international trade mark under registration number 885912. That mark is a trade mark in which the Complainant has rights.
The Disputed Domain Name incorporates that trade mark in its entirety. It is therefore similar to a trade mark in which the Complainant has rights.
The combination of the trade mark with the letters “uk” and “plc” is likely to lead the public to believe that the Disputed Domain Name is the URL for a website about the Complainant’s business in the United Kingdom which is untrue and therefore likely to be confusing.
It follows that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The second element is present.
The second sub-paragraph of section 2.1 of the WIPO Overview 3.0 states:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. A s such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In view of the registration of the G4S trade marks throughout the world and the goodwill and reputation likely to accrued to those marks, the Respondent would be unable to trade under those characters or those of the Disputed Domain Name without the Complainant’s license. The Complainant denies that it has ever granted such a license.
The Complainant also denies that any of the circumstances in paragraph 4(c) of the Policy applies to this case.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Respondent has had ample opportunity to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name but has not done so. It follows that the Complainant has satisfied the second element.
C. Registered and Used in Bad Faith
The third element is present.
“Bad faith” is not defined by the Policy but paragraph 4(b) lists a number of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. Paragraph 4(b) makes clear that evidence of bad faith is not limited to those circumstances. It follows that circumstances that are ejusdem generis those of paragraph 4(b) would constitute evidence of registration and use in bad faith.
The circumstances to be taken into account in this case are as follows:
- The Disputed Domain Name that is confusingly similar to the Complainant’s trade mark has been registered without the Complainant’s license;
- The registrant of the Disputed Domain Name has concealed his or her identity by registering it under what appears to be a false name, using a privacy service and failing to respond to the Complainant’s pre-action correspondence;
- The name in which the Disputed Domain Name is registered is the same as the name of one of the Complainant’s employees;
- The Respondent has offered no explanation for its behavior either in pre-action correspondence or in response to the Complaint.
Taken together, they point inexorably to intentional wrongdoing. It follows that the circumstances of this case are ejusdem generis those of paragraph 4(b) of the Policy, and that they must stand as evidence of registration and use in bad faith.
D. Request for Redaction
At section 6B of the decision in BDR Thermea Group, the panel wrote:
“One of the Respondents appears to have used the name of an officer of the Complainant when registering one of the disputed domain names. In light of the identity theft, the Panel has redacted the Respondent’s name corresponding to an officer of the Complainant from this decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788; Aquent LLC v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2019-0689.”
The Complainant has alleged that the registration of the Disputed Domain Name in the name of its employee amounts to identity theft. That was not denied by the Respondent. Identity theft is certainly a possibility though there could be other explanations. In the absence of any such explanation from the Respondent, and in view of the finding that the Disputed Domain Name was registered and is being used in bad faith, the Panel directs the name of the Respondent to be omitted from this decision wherever it occurs. The Panel also authorizes the Center to disclose in confidence such information to the Registrar as the Registrar may reasonably require to transfer the Disputed Domain Name to the Complainant.
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, <ukg4splc.com>, be transferred to the Complainant.
Date: October 8, 2021