G4S Limited v g4s company, G4S

WIPO Case No. D2024-3165

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. g4s company, G4S

Case No. D2024-3165

1. The Parties

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

The Respondent is g4s company, G4S, United Arab Emirates (“UAE”).

2. The Domain Name and Registrar

The disputed domain name <uaeg4s.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2024.
On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 2, 2024, 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 (Privacy service provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
August 5, 2024, 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

August 6, 2024.

The Center verified that the Complaint [together with the amendment to the Complaint/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 August 12, 2024. In accordance with the Rules, paragraph
5, the due date for Response was September 1, 2024. The Respondent sent an email communication to the
Center on August 14, 2024.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on September 17, 2024. 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.

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4. Factual Background

The Complainant, G4S plc, is a global security services provider, established in 2004 through the merger of two prominent security companies, Group 4 Falck and Securicor. G4S operates in various sectors, offering security solutions such as cash management services, risk consulting, and the provision of manned security personnel. The Complainant is a publicly listed company on the London Stock Exchange and has a well-

established reputation in providing integrated security solutions in over 90 countries.

The Complaint is based on the following registered trademarks, which are used in connection with security services, including manned security and cash handling services:

- European Union Trade Mark No. 015263064, G4S, Reg. Date September 20, 2016 – Classes 6, 36,
37;

- United States Registration (“Reg.”) No. 3378800, G4S, Reg. Date February 05, 2008 – Classes 9, 39,
45;

- International Trademark Reg. No. 885912, G4S, Reg. Date October 11, 2005 – Classes 1, 5, 6, 9, 16,
35, 36, 37, 38, 39, 41, 42, 44, 45.

The Complainant operates multiple domain names incorporating the G4S trademark, including the primary domain, <g4s.com>, used for its global operations. Correspondence between the Complainant and Respondent reveals that a cease-and-desist letter was issued to the Respondent regarding the use of the disputed domain name. Despite this, the Respondent has not ceased use or transferred the domain.

The disputed domain name <uaeg4s.com> was registered on May 22, 2024. It is currently inactive but previously redirected to a Pay-Per-Click site which had advertisements links that directed users to third-party websites that offered similar services to the Complaint. The disputed domain name had previously resolved to a website hosted by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the UDRP for the transfer of the disputed domain name.

Specifically, the Complainant that the disputed domain name is confusingly similar to its well-known and registered G4S trademark. The domain incorporates the entirety of the G4S trademark along with the geographical term “UAE”, which refers to the United Arab Emirates, a region where the Complainant has substantial operations. The addition of the geographic term does not diminish the similarity but rather enhances the likelihood of confusion, as it suggests a direct connection to the Complainant’s UAE operations. The Complainant’s registered marks predate the registration of the disputed domain name, reinforcing the claim of similarity and potential confusion among consumers.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Evidence suggests that the Respondent may be using the disputed domain name to profit from the reputation of the Complainant by confusing consumers and diverting traffic intended for the Complainant's official websites.
disputed domain name. The Respondent is not commonly known by the name “G4S” and has not been
authorized by the Complainant to use its trademarks in any manner. Furthermore, there is no evidence that
the Respondent is using the domain name for a legitimate noncommercial purpose or has made any
demonstrable preparations to use the domain in connection with a bona fide offering of goods or services.
Instead, the Complainant argues that the Respondent registered the domain to mislead consumers into
believing the domain is affiliated with or endorsed by the Complainant.

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The Complainant provided evidence of previous redirection of the domain name to an unrelated website, which could mislead internet users into believing they are interacting with the Complainant's official UAE site. Despite receiving a cease-and-desist letter from the Complainant, the Respondent did not comply with the request to transfer or cease using the domain name. This failure to respond suggests an intention to retain the domain name to exploit the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i)        the disputed domain name is 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 name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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

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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7

Although the addition of other terms (here, “uae”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Complainant’s registered trademark G4S is clearly recognizable within the disputed domain name

<uaeg4s.com>.

The Panel therefore finds that 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.

Although 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 difficult 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

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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 (although the burden of proof always remains on the complainant). 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 available 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 the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent is not commonly known by the disputed domain name, nor has it made any demonstrable preparations to use the domain in connection with a bona fide offering of goods or services. The Respondent’s use of the domain name does not appear to be for legitimate noncommercial or fair purposes, as the domain was inactive or directed users to a site unrelated to the Complainant's business. The Panel notes that the Respondent provided the name “g4s company, G4S” in the registration details of the disputed domain name. However, there is no evidence that the Respondent is actually commonly known by the disputed domain name or a name associated with the disputed domain name. Rather, in the circumstances of this case, the Panel finds it most likely that the Respondent sought to use registration details falsely suggesting a connection or affiliation with the Complainant.

The Panel finds the second element of the Policy has been established.

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.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark.

The Respondent registered the disputed domain name containing the Complainant’s well-known trademark G4S combined with the geographic term “uae”, creating confusion with the Complainant’s established presence in that region. By doing so, the Respondent is likely trying to mislead users into believing the domain is affiliated with or endorsed by the Complainant, for potential commercial gain.

The Complainant has also demonstrated that despite sending a cease-and-desist letter, the Respondent failed to cease using the domain name, further supporting the conclusion of bad faith use. The lack of any legitimate business or noncommercial use of the disputed domain name, as well as its misleading nature, supports a finding of registration and use in bad faith.

Panels have held that the non-use of a domain name, or passive holding, would not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. In this case, despite the domain currently being inactive, noting the reputation of the G4S trademark, combined with the specific geographic reference in the disputed domain

name, leads the Panel to conclude that the passive holding of the disputed domain name does not prevent a

finding of bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <uaeg4s.com> be transferred to the Complainant.

/Eva Fiammenghi/
Eva Fiammenghi
Sole Panelist
Date: October 1, 2024