G4S Limited v David Czinczenheim

WIPO Case No. D2023-1360

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. David Czinczenheim

Case No. D2023-1360

1. The Parties

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

The Respondent is David Czinczenheim, France.

2. The Domain Name and Registrar

The disputed domain name <g4sgroup.com> is registered with Domains Etc LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2023.

On March 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 4, 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/Statutory Masking Enabled) and contact
information in the Complaint. The Center sent an email communication to the Complainant on April 18,
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

Aril 24, 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 the due date for Response was May 14, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on May 17, 2023.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 23, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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

Rules, paragraph 7.

4. Factual Background

The Complainant is a London-based global security company which provides security and facility services in around 80 countries across the world. It was founded initially in 1901 and has been operating under its current name since 2004. In 2021, the Complainant was acquired by Allied Universal, and presently has a network of more than 800,000 employees globally.

The Complainant is the owner of the trademark G4S, registered in various jurisdictions, including as a
European Union Trade Mark No 15263064, registered as of September 20, 2016.

The disputed domain name was registered on August 24, 2022, and resolves to a website offering the domain name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant’s trademark is recognizable in the disputed domain name, the only addition being the term

“group”. The Complainant’s trademark is therefore confusingly similar with the disputed domain name.

The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not registered any trademark for the term G4S and there is no evidence that the Respondent holds any unregistered rights to the term. The Complainant has not licensed or otherwise authorized the Respondent to use the disputed domain name.

The disputed domain name resolves to a website where it is listed for sale at the price of EUR 600. At the

time of sending the Complainant’s cease and desist letter, the disputed domain name was listed at the price

of EUR 3,499. This shows that the Respondent’s primary purpose for registering the disputed domain name

is to generate undue profit based on the disputed domain name’s value as a trademark.

The disputed domain name has also resolved to a pay-per-click (“PPC”) website containing links to websites

of other companies in the field of security. These do not constitute any bona fide offering of goods or

services.

The Complainant’s trademark has been used for almost 20 years and predates the registration of the

disputed domain name by 18 years. The Complainant is well-known in the United Kingdom, Germany, and

elsewhere throughout the world, such as in Africa and Asia.

The Respondent has ignored the Complainant’s cease and desist letter. The disputed domain name has

been listed for sale for prices far beyond what would reasonably be the Respondent’s out-of-pocket costs for

the registration of the disputed domain name. The Complainant asserts that the Respondent primarily

registered the disputed domain name with the view of selling it back to the Complainant for a sum in excess

of the Respondent’s out-of-pocket costs. Also, the use of PPC links also constitutes another clear attempt to

generate commercial gain from the Complainant’s trademark.

Finally, the Respondent has engaged in a pattern of abusive conduct by registering other domains, which
encompass well-known third-party trademarks, such as <10yahoo.com>, <04hotmail.com>,
<googlemeail.com> and <verizsin.net>.

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B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g.,

‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the

first element confusing similarity test”.

Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the

disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,

meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The

nature of such additional term(s) may however bear on assessment of the second and third elements.”

The disputed domain name is confusingly similar to the Complainant’s trademark G4S as it includes the

Complainant’s trademark entirely with the term “group”. This does not prevent a finding of confusing

similarity between the Complainant’s trademark and the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademark and

hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing

indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the

burden of production shifts to the respondent to come forward with evidence of such rights or legitimate
interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of
the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO
Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

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Section 2.9 of the WIPO Overview 3.0 states: “Applying UDRP paragraph 4(c), panels have found that the

use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering

where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or

otherwise mislead Internet users." Furthermore, offering the domain name for sale indicates that the

Respondent has no intention to use it for any bona fide purposes in the future, either.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted

by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other

circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain

name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily

for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant

who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable

consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain

name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has]

engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or

competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain,

Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with

the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s]

website or location or of a product or service on [the respondent’s] website or location.”

The disputed domain name has been offered for sale for various prices, ranging from EUR 600 to EUR 3,499. At the time of writing this decision, the disputed domain is for sale at the price of EUR 199. The disputed domain name has previously resolved to a website that displays various PPC commercial links.

According to section 3.5 of the WIPO Overview 3.0 such use can indicate the Respondent’s bad faith.

In conclusion, the Respondent has used the disputed domain name to intentionally attempt to attract, for

commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the

Complainant’s trademark. The Respondent has also acquired the disputed domain name primarily for the

purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s out-of-

pocket costs directly related to the disputed domain name

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain

name that is identical or confusingly similar to a third party’s well-known trademark constitutes by itself, a

WIPO Overview 3.0

presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the . the Policy, paragraph 4(a)(iv).

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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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, <g4sgroup.com> be transferred to the Complainant.

/Tuukka Airaksinen/

Tuukka Airaksinen

Sole Panelist
Date: June 2, 2023