G4S Limited v de ola

WIPO Case No. D2023-1187

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. de ola

Case No. D2023-1187

1. The Parties

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

America.

The Respondent is de ola, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <rm-g4s.com> (the “Disputed Domain Name”) 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 16, 2023. the disputed domain name to the Complainant. The Center sent a possible settlement email on March 24, 2023 to which the parties did not follow up due to lack of response by the Respondent. The Complainant informed the Center that the proceeding should be continued on March 27, 2023.
On March 16, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 17, 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 (Domains By Proxy, LLC, DomainsByProxy.com) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 23,
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

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 April 26, 2023. The Respondent sent an email communication on April 10,

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2023 specifying that her address was not correct and offering to give the Disputed Domain Name to the
Complainant. No Response was filed. Accordingly, the Center notified the Commencement of Panel
Appointment Process on May 3, 2023.

The Center appointed Nick J. Gardner as the sole panelist in this matter on May 10, 2023. 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 a global security company founded in 1901 and has been operating under the name security and facility services in over 80 countries around the world.

The Complainant owns several trademark registrations around the world for the term G4S. See for example referred to as the “G4S Trademark” in this decision.

The Complainant also holds several domain names incorporating the term G4S, including <g4s.com>,
<g4s.cz>, <g4s.us>, <g4s.cn>, <g4s.in> and <g4s.co>. The domain name <g4s.com> was registered on
December 1, 1999 and resolves to the Complainant’s main multilingual website at “ The
Complainant’s social media presence under the G4S Trademark extends to Facebook, Twitter, LinkedIn,

Instagram and Youtube.

The G4S Trademark has been the subject of several past domain name disputes under the Policy in 2022
alone, including G4S Limited v. Chukwuma Maduabuchi, WIPO Case No. D2022-2874; G4S Limited v.
Registration Private, Domains By Proxy//G4ss company, WIPO Case No. D2022-2797; G4S Limited v.
WhoisSecure / Myung Idbaloxy, WIPO Case No. D2022-1721; G4S Limited v. 胡雪 (Ni Cary), WIPO Case
No. D2022-1242; G4S Limited v. Christian Eggendorfer, Eggendorfer Dienstleistungs GmbH, WIPO Case
No. D2022-0611; G4S Limited v. Frederick R Nielsen, Nielsen Business Worldwide Corporation, WIPO
Case No. D2022-0091.

The Respondent appears to be an individual. The Disputed Domain Name was registered on August 29, 2022. The Disputed Domain Name resolves to a Pay- Per-Click (PPC) webpage containing links such as ‘Security Guard’ and ‘Best Security System for Home’, which direct users to websites which offer services which compete with those of the Complainant.

The Complainant’s representatives sent a “cease and desist” notice to the Respondent on the 22nd
September 22, 2022. No reply was received.

On March 24, 2023 the Respondent sent an e-mail to the Center which read as follows “Just give them the domain back, I don't want or need it thanks!”. On April 10. 2023 the Respondent sent a further email to the Center providing different address details and stating “I am not paying anything just take the domain and use

this email as acceptance of settling”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

In particular it states as follows.

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a)	The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant holds many trademark registrations for the G4S Trademark. The Disputed Domain Name incorporates the G4S Trademark in full, preceded by the term “rm-”. The addition of “rm-” does not negate a finding of confusing similarity – if anything, the addition of those letters in the Disputed Domain Name further adds confusion in the minds of Internet users as the letters ‘RM’ are often used to refer to ‘Risk Management’ in relation to G4S offerings.
b)	The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not registered any trademarks for “g4s”, “rm-g4s”, or any similar term. 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 Respondent is not connected or affiliated with the Complainant and has not received license or consent to use the G4S Trademark in any way; and
c)	registration for the G4S Trademark predates the creation of the Disputed Domain Name by more than

The Disputed Domain Name was registered and being used in bad faith. The earliest trademark registering the Disputed Domain Name. The Respondent has used the G4S Trademark to create an impression of association with the Complainant, in order to earn revenue by the use of PPC links. This establishes bad faith registration and use.

The Complainant also says that whilst there has been no phishing activity uncovered, the Complainant also notes the Respondent’s activation of mail exchange (MX records) for the Disputed Domain Name and submits that the Respondent is likely using the Disputed Domain Name to carry out fraudulent activity.

B. Respondent

No formal Response has been filed. See above for details of the Respondent’s informal emails to the

Center.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no formal Response has been filed. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. In any event the Respondent’s informal communications show she is aware of the Complaint. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any substantive Response(see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i)        the Disputed Domain Name is identical with 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 Disputed Domain Name;

(iii)      the Disputed Domain Name has been registered and is being used in bad faith.

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A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1

The Panel finds the entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms (here, “rm-”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the disputed domain name[s] and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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. As 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. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the Disputed Domain Name.

The Panel considers that the record of this case reflects that:

- before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the disputed domain name[s] or a name corresponding to the disputed domain name[s] in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2;

- the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name[s]. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3;

- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name[s],
without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4;

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- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in
the disputed domain name[s].

Based on the available record, the Panel finds the second element of the Policy has been established. In view of the Panel’s reasoning above it does not need to reach a conclusion on the Complainant’s alternative argument that the Respondent is likely using the Disputed Domain Name to carry out fraudulent activity.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel considers that the record of this case reflects that:

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of
confusion with the Complainant’s mark, and the Respondent derives commercial gain as a result. The
website linked to the Disputed Domain Name comprises a series of pay-per-click (“PPC”) links to other third-
party websites. The Panel infers that some consumers, once at this website will follow the provided links and
“click through” to other sites which offer products some of which may compete with those of the Complainant.
The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the website
is automatically generated. This does not however matter. It is well established that where a domain name
is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of
the name’s association with the Complainant, such use amounts to use in bad faith, see for example
Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No.
D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,
WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex
Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.

In the present case, the Panel further notes that the Respondent has not filed a substantive Response and hence has not availed herself of the opportunity to present any case of good faith that she might have. The Panel infers that none exists. The Panel also notes that it appears from the Respondent’s informal

communications that she does not object to the Disputed Domain Name being transferred to the

Complainant.

Based on the available record, the Panel finds the third element of the Policy has been established.

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, <rm-g4s.com> be transferred to the Complainant.

/Nick J. Gardner/
Nick J. Gardner
Sole Panelist
Date: May 24, 2023