G4S Limited v Frederick R. Nielsen, Nielsen Business Worldwide

WIPO Case No. D2022-0091

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. Frederick R. Nielsen, Nielsen Business Worldwide
Corporation

Case No. D2022-0091

1. The Parties

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

The Respondent is Frederick R. Nielsen, Nielsen Business Worldwide Corporation, United States of America

(“United States”).

2. The Domain Names and Registrar

The disputed domain names <g4s.business>, <g4s.company>, <g4s.report>, <g4s.services>, <g4s.team> and <g4s.world> are registered with 101domain GRS Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2022. connection with the disputed domain names. On January 13, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 January 17, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 6, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 7, 2022.

The Center appointed Assen Alexiev as the sole panelist in this matter on February 15, 2022. 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

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Rules, paragraph 7.

4. Factual Background

The Complainant is a global security company that provides security and facility services in around 80
countries across the world. It has been operating under its current name G4S (or Group 4 Securicor) since
2004, and presently has a network of more than 800,000 employees globally.

The Complainant is the owner of the following trademark registrations for the sign G4S (the “G4S trademark”):

− the International trademark G4S with registration No. 885912, registered on October 11, 2005 for goods

and services in International Classes 1, 5, 6, 9, 16, 35, 36, 37, 38, 39, 41, 42, 44 and 45;

− the United States trademark G4S with registration No. 3378800, registered on February 5, 2008 for goods

and services in International Classes 9, 39 and 45; and

− the European Union Trade Mark G4S with registration No. 015263064, registered on September 20, 2016

for goods and services in International Classes 6, 36 and 37.

The Complainant is also the owner of the domain name <g4s.com> registered on December 1, 1999, which resolves to the Complainant’s main website, as well as a number of country-code Top-Level domain names, including <g4s.cz>, <g4s.us>, <g4s.cn>, <g4s.in>.

The disputed domain names were registered on the following dates:

Disputed domain name	Date of registration
<g4s.team>	September 11, 2021
<g4s.company>	August 13, 2021
<g4s.report>	August 13, 2021
<g4s.services>	August 13, 2021
<g4s.business>	January 1, 2022
<g4s.world>	January 1, 2022

They currently resolve to landing webpages.

5. Parties’ Contentions
A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to its G4S trademark, because they incorporate the trademark exactly, without alteration or addition.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because it has not registered any trademarks for G4S, and has not been licensed by the Complainant to register domain names featuring the G4S trademark. According to the Complainant, the Respondent is not known by the G4S trademark and is not affiliated with the Complainant. The Complainant also submits that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, and they have only been used to resolve to near identical landing pages which display the wording “Future home of...,” followed by the respective disputed domain name, which is the default content provided by the Registrar.

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The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant points out that the earliest registration of the G4S trademark predates the registration of the disputed domain names by more than 15 years, and the Respondent was or should have been aware of the Complainant when registering the disputed domain names, all of which combine the G4S trademark with commercial generic Top-Level Domain (“gTLD”) extensions (in particular “.business”, “.company” and “.services”), and intended to target the Complainant’s offerings.

The Complainant notes that it sent cease-and-desist correspondence to the Respondent on October 19, use of the disputed domain names.

2021, and a reminder notice on October 26, 2021, but the Respondent did not respond. Rather, it
proceeded to register the disputed domain names <g4s.business> and <g4s.world> on January 1, 2022.

The Complainant submits that the Respondent has engaged in a pattern of abusive conduct by registering the six disputed domain names that exactly comprise the Complainant’s G4S trademark, as well as other domain names that reflect third party trademarks.

The Complainant contends that the Respondent’s non-use of the disputed domain names constitutes bad faith use for the purposes of the Policy under the doctrine of passive holding. The Complainant notes in this regard that the disputed domain names comprise the Complainant’s distinctive and globally recognizable G4S trademark, so the Respondent must been aware of the Complainant’s rights in this term when registering the disputed domain names. The Complainant points out that the Respondent has not provided any evidence of actual or contemplated good faith use of the disputed domain names, and they have not been used. According to the Complainant, the Respondent’s failure to respond to its cease-and-desist correspondence further suggests that it lacks plans to use the disputed domain names in good faith, and such use is in any case implausible.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”

The Respondent has however not submitted a Response or disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the G4S trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.

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The Panel notes that a common practice has emerged under the Policy to disregard the “gTLD” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of

the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview

3.0”). The Panel sees no reason not to follow the same approach here, and will disregard the “.business”,

“.company”, “.report”, “.services”, “.team” and “.world” gTLDs of the disputed domain names.

Each of the disputed domain names incorporates the G4S trademark entirely without the addition of any

other elements. This is sufficient for the Panel to conclude that this disputed domain names are identical to

the G4S trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because it has not been authorized to use the G4S trademark and has not been commonly known by the disputed domain names. The Complainant adds that the Respondent has never made any bona fide

use of the disputed domain names and has not responded to the Complainant’s cease-and-desist letters. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a Response, and has not provided and plausible explanation for the registration of the six disputed domain names all of which are identical to the G4S trademark. Moreover, the Respondent has not responded to the cease-and-desist letter of the Complainant, but has proceeded to register two more of the disputed domain names after receiving this letter. In view of this, it appears to the Panel that it is more likely than not that the Respondent has targeted the G4S trademark with the registration of the disputed domain names and has attempted to corner the market in domain names reflecting the Complainant’s trademark. Such actions cannot support a finding that the Respondent has rights or legitimate interests in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

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competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your 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 your website or location or of a product or

service on your website or location.”

The disputed domain names are all identical to the G4S trademark, which was registered many years prior to names were registered soon after the Complainant sent a cease-and-desist letter to the Respondent.

their registration, and Internet users may regard them as official online locations of the Complainant. The
Complainant states that it has not authorized the registration of the disputed domain names, and the

Taking the above into account, the Panel concludes that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the G4S trademark since they may confuse and attract Internet users looking for the services of the Complainant.

The disputed domain names resolve to Registrar’s parked pages, which display the wording “Future home of…” followed by each applicable disputed domain name. The Panel finds that Internet users would be misled by the disputed domain names into the expectation that they would reach websites operated by the Complainant. Accordingly, the holding and use of the disputed domain names in these circumstances do not prevent a finding of bad faith.

The Complainant has submitted evidence about the reputation of the G4S trademark, the Respondent has not submitted a Response and has not provided any evidence of actual or contemplated good-faith use of the disputed domain names, and the Panel has not been made aware of any good faith use to which the

disputed domain names may be put.

The fact that the Respondent has registered six domain names also supports a finding that it has engaged in
a pattern of conduct, whereby it has registered them in order to prevent the Complainant from reflecting the
G4S trademark in a corresponding domain name, which supports a finding of bad faith under paragraph
4(b)(ii) of the Policy.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

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 names <g4s.business>, <g4s.company>, <g4s.report>, <g4s.services>,

<g4s.team> and <g4s.world> be transferred to the Complainant.

/Assen Alexiev/
Assen Alexiev
Sole Panelist
Date: March 1, 2022