G4S Limited v Chou Kaiser

WIPO Case No. D2023-1778

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. Chou Kaiser

Case No. D2023-1778

1. The Parties

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

The Respondent is Chou Kaiser, United States of America.

2. The Domain Name and Registrar

The disputed domain name <g4stv.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2023. On April 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2023, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2023 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 25, 2023.

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 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2023.

The Center appointed Mihaela Maravela as the sole panelist in this matter on May 31, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

According to information in the Complaint, the Complainant is a London, United Kingdom based global security company, founded in 1901, which provides security and facility services in around 90 countries across the world. The Complainant offers a diverse range of services, in the area of security solutions, cash

solutions, consulting services, and care and justice services.

The Complainant has registered various trademarks consisting of G4S, including the International trademark
No. 885912, registered on October 11, 2005. The Complainant is the registrant owner of the domain name
<g4s.com> registered on December 1, 1999 that it uses as its official website and of many other domain

names.

The disputed domain name was registered on September 4, 2022 and is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it owns registered trademarks for G4S, which became a distinctive identifier
associated with the Complainant’s goods and services. Further, the Complainant submits that the disputed
domain name is confusingly similar to the Complainant’s G4S trademark, as it encompasses the G4S
trademark of the Complainant in its entirety with the addition of the acronym “tv” (for television). The
Complainant’s G4S trademark is the dominant and only distinctive element in the disputed domain name.
The addition of the term “tv” is not sufficient to alleviate the likelihood of confusion between the
Complainant’s G4S trademark and the disputed domain name.

With respect to the second element, the Complainant argues that the Respondent does not have any trademark rights to the term “g4s”. There is also no evidence that the Respondent retains any unregistered trademarks to the term “g4s”, or “g4stv”, or any similar term. Neither has the Respondent received any license from the Complainant to use domain names featuring the G4S trademark. The Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name does not currently resolve to a webpage, but the non-use of a domain name is considered by panels not to be a bona fide offering of goods or services. The Complainant further contends that its trademark G4S is a distinctive term used to represent the Complainant’s goods and services. There is no generic or common usage for the term G4S. Nor has any evidence come to light since the disputed domain name’s registration that the Respondent has intended to use the disputed domain name in a way other than to target the Complainant.

As regards the third element, the Complainant contends that its trademark registrations predate the creation date of the disputed domain name by at least 17 years and the G4S name has become synonymous with its offerings and services within its industry. The Respondent registered the disputed domain name in bad faith, with the primary intention of taking advantage of the Complainant’s trademark. Moreover, the Complainant

alleges that the passive use of the disputed domain name does not preclude a finding of bad faith. The itself has no ordinary or dictionary meaning. Finally, the Respondent failed to respond to the Complainant’s cease-and-desist letter.

B. Respondent

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

page 3

6. Discussion and Findings

No response has been received from the Respondent in this case. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to that trademark. This first element under the Policy functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7.

The Complainant has provided evidence of its rights in the G4S trademarks by providing evidence of its trademark registrations.

As regards the second limb of the first element, the test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name. It is well- established that the generic Top-Level Domain (“gTLD”), in this case “.com” may be ignored when assessing

the confusing similarity between the disputed domain name and the Complainant’s trademarks. Only the
second-level portion of the disputed domain name is taken into consideration.

The trademark G4S is reproduced in its entirety in the disputed domain name. The addition of the letters “tv” does not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of

other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative,
meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO

Overview 3.0.

The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant has established a prima facie case that it holds rights over the G4S trademark and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a

page 4

bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate
noncommercial or fair use of the disputed domain name within the meaning of paragraphs 4(c)(i) and (iii) of
the Policy. Also, there is no evidence that the Respondent is commonly known by the disputed domain
name within the meaning of paragraph 4(c)(ii) of the Policy.

The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to bring evidence to the contrary.

Moreover, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety cannot be considered fair as it falsely suggests an affiliation with the Complainant that does not exist (see section 2.5 of the WIPO Overview 3.0).

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The Complainant’s registration and use of the relevant trademarks predate the date at which the Respondent registered the disputed domain name. The Respondent has not denied knowledge of the Complainant. Under these circumstances, and also given the Complainant’s trademarks are well-known and the confusing similarity between the disputed domain name and the Complainant’s trademarks, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks, and with intention to target those trademarks.

As regards the use, the disputed domain name is passively held.

Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain will be considered to be in bad faith: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

The Panel finds that passive holding of the disputed domain name does not, in the circumstances of this case, prevent a finding of bad faith. There is no evidence in the record of a legitimate use of the disputed domain name. The trademarks of the Complainant are reputed and widely used in commerce. UDRP

panels have consistently found that the mere registration of a domain name that is identical or confusingly
similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of
bad faith. See section 3.1.4 of the WIPO Overview 3.0.

Moreover, the Respondent has not formally participated in these proceedings and has failed to rebut the Complainant’s contentions and to provide any evidence of actual or contemplated good-faith use and indeed none would seem plausible. The Respondent also failed to respond to the Complainant’s cease-and-desist letter.

Based on the evidence and circumstances of this case, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.

page 5

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 <g4stv.com> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: June 14, 2023