WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G4S Plc. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-0581

1. The Parties

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

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name, <g4sjavelin.com>, is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 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 March 21, 2019.

The Center verified that the Complaint together with the amended Complaint (collectively, 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 March 29, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was April 18, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 25, 2019.

The Center appointed D. Brian King as the sole panelist in this matter on May 10, 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

A. The Parties

The Complainant is G4S Plc., a British security services company founded in 1901. It has been operating under the name “G4S” since the 2004 merger of Securicor, the Complainant’s predecessor, and the Danish company Group 4 Flack. According to the Amended Complaint, the Complainant is the world’s largest security solutions provider, has over 585,000 employees worldwide, and operates in more than 100 countries. The Complainant is listed on the London and Copenhagen Stock Exchanges. In 2017, the Complainant reported revenues of GBP 7.8 billion (Annex 6 to the Complaint).

The Panel has no information about the activities or history of the Respondent.

B. The Marks

The Complainant has used the G4S mark in commerce since 2004 and first registered it as a trademark in 2005. The Complainant presently holds registrations for the G4S mark in several countries globally (Annex 7 to the Complaint). A non-exhaustive sample of these registrations follows:

C. Domain Names

The Complainant has registered the domain name <g4s.com> as its official website to promote its services. Since 2004, the Complainant has also established a number of country-specific websites incorporating its G4S mark, including <g4s.cz>, <g4s.us>, <g4s.cn>, <g4s.in> and <g4s.co>. In November 2017, the Complainant launched a new operating model called “Project Javelin,” in relation to which it established the website <javelin.g4s.com>.

The disputed domain name, <g4sjavelin.com> (“Domain Name”), was registered on February 13, 2019. This date is over a decade later than the first (2005) registration of the G4S trademark by the Complainant. When last accessed by the Complainant, the Domain Name resolved to a pay-per-click (“PPC”) website containing links to, inter alia, security service firms and jobs (Annex 14 to the Complaint). The Respondent’s website also offered the Domain Name for sale for the amount of USD 500 (see id.).

The Complainant sent a cease and desist letter to the Respondent’s proxy service on February 19, 2019. The Respondent did not reply to the letter. The Complainant sent a further letter on February 27, 2019, which likewise went unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is confusingly similar to its registered trademarks. It submits that, as the world’s largest security solutions provider, its G4S mark has won worldwide recognition and acclaim. In support of this, the Complainant notes that it recently won a EUR 30 million contract from the French Ministry of Justice and has provided services for high-visibility projects, including the Thames Tideway and the London 2012 Olympics (Annexes 8, 9 and 10 to the Complaint). The Complainant submits that the Respondent has simply appended the generic term “javelin” to the Complainant’s famous G4S mark. The addition of this generic term, the Complainant argues, does not distinguish the Domain Name from its mark. On the contrary, given the Complainant’s launch of “Project Javelin” in November 2017, the use of the term “javelin” in the Domain Name only increases the likelihood of confusion on the part of Internet users. The Complainant adds that the addition of the generic Top-Level Domain (“gTLD”) “.com” likewise does nothing to distinguish the Domain Name from its widely-recognized G4S mark.

The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant submits that the Respondent is not commonly known by or associated with the Domain Name and denies that the Respondent has acquired any common law or other rights in it. The Complainant notes that the Domain Name was only registered in February 2019 and has, since its registration, resolved to a PPC website (Annex 14 to the Complaint). While a PPC website may in some circumstances reflect a legitimate use, the Complainant submits, that is not the case where, as here, the PPC website offers links to third-party services related to, and competing with, the Complainant’s business. The Complainant further notes that the Respondent had an opportunity to respond to the Amended Complaint and provide evidence of rights or legitimate interests in the Domain Name, but has declined to do so.

Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant first argues that given the fame of the G4S trademark and the fact that the Domain Name resolves to a website offering links to services related to the Complainant’s business, the Respondent must have had knowledge of the Complainant’s rights in the mark when registering the Domain Name. This is said to constitute sufficient evidence of bad faith registration. Furthermore, the Complainant submits that at least two of the circumstances identified in paragraph 4(b) of the Policy, as constituting evidence of bad faith registration and use, are present here. First, the fact that the Respondent’s website offers the Domain Name for sale for USD 500 – an amount asserted to exceed any out-of-pocket costs the Respondent would have incurred – shows that the circumstance identified in paragraph 4(b)(i) of the Policy exists here. Second, according to the Amended Complaint, the Respondent is attempting to trade off the Complainant’s goodwill in the G4S mark to attract Internet users to the Respondent’s PPC website for commercial gain – meaning that the circumstance identified in paragraph 4(b)(iv) of the Policy is present here as well.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

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

(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.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Complainant has provided evidence demonstrating that it has rights in the G4S mark. Specifically, the Complainant has shown that it has used the mark in connection with its business since 2004; that it obtained registered trademarks for G4S in multiple jurisdictions starting in 2005; and that the mark has attained public recognition on a worldwide basis.

The Domain Name entirely incorporates the Complainant’s mark and appends to it the term “javelin”. Prior UDRP panels have consistently held that the addition of generic or descriptive words to a complainant’s trademark does not distinguish a domain name from the registered mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307; Lime Wire LLC v. David Da Silva / Conactprivacy.com, WIPO Case No. D2007-1168; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251). Furthermore, the term added here – “javelin” – actually affirms the confusing similarity of the Domain Name to the Complainant’s mark, given the Complainant’s launch of “Project Javelin” and an associated domain name and website in November 2017. Nor does the addition of the gTLD “.com” do anything to prevent a finding of confusing similarity.

Accordingly, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s G4S mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see Belupo d.d v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden shifts to the Respondent to prove that it does have rights or legitimate interests in the Domain Name.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. The Complainant has shown that it registered the G4S mark in multiple jurisdictions as early as 2005 – more than a decade before the Domain Name was registered in February 2019. Accordingly, the Respondent was at least on constructive notice, and likely on actual notice, of the Complainant’s rights in the G4S mark when registering the Domain Name. Indeed, the composition of the disputed domain name and the fact that the Respondent’s PPC website contains links to security service businesses constitutes an implicit acknowledgement of actual notice on the Respondent’s part.

The Panel finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name or has obtained any rights in respect of the Domain Name. In the absence of any contrary evidence, the Panel also accepts the Complainant’s submission that the Respondent has no connection to the Complainant or its business.

In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. Accordingly, the Panel finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. As already noted, paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use.

The Panel finds that two of those circumstances are present in this case. As already concluded above, the Domain Name is confusingly similar to the Complainant’s mark, and it resolves to a PPC website offering links to services in the same line of business as the Complainant. This establishes to the Panel’s satisfaction that the Respondent is intentionally attempting to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. Under paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use.

Furthermore, the evidence shows that the Respondent has offered the Domain Name for sale for USD 500 – an amount that, in the Panel’s view, very likely exceeds the out-of-pocket costs that the Respondent would have incurred in relation to the Domain Name. To be sure, there is no direct evidence to support the assertion in the Amended Complaint that the Respondent’s intention is to sell the Domain Name to the Complainant or one of its competitors. However, the Respondent’s failure to respond to the Amended Complaint, despite a full opportunity to do so, gives rise to an adverse inference to that effect. Accordingly, the circumstance identified in paragraph 4(b)(ii) of the Policy is likewise sufficiently established here.

On these grounds, the Panel finds that the Complainant has satisfied its burden with respect to the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <g4sjavelin.com>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: May 24, 2019