G4S Limited v Jerry Anderson

WIPO Case No. D2024-1033

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. Jerry Anderson

Case No. D2024-1033

1. The Parties

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

The Respondent is Jerry Anderson, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <ca-g4s.com>, <comg4s.com>, <ess-g4s.com>, <g4sbenefitnow.com>,
<g4sclaims.com>, <g4sconnections.net>, <g4sdevlever.com>, <g4-security.com>, <g4sfit.com>,
<g4sfitness.com>, <g4sgameday.com>, <g4sgov.com>, <g4sgovernmentservices.com>, <g4shq.com>,
<g4smarket.com>, <g4snl.com>, <g4spintowin.com>, <g4sprogamersleague.com>,
<g4sretailsolutions.com>, <g4ssecurecommand.com>, <g4ssss.com>, <g4supplements.com>, <g4s.wang>,
<myessg4s.com>, <usag4sjobs.com>, <usajobg4s.com>, and <wg4s.com> are registered with Dynadot Inc

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2024. On March 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 11, 2024, 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 March 14, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 5, 2024.

page 2

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 10, 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.

4. Factual Background

The Complainant is a London-based global security company which provides security and facility services in numerous countries across the world. Initially founded in 1901, the Complainant has operated under its current name, G4S (or Group 4 Securicor) since 2004, when Group 4 Falck and Securicor merged. In 2021 the Complainant was acquired by Allied Universal, and presently has a network of more than 800,000

employees globally. The Complainant now operates under the name G4S Limited. The Complainant offers a diverse range of services, broadly divided into the categories of “Security Solutions”, “Cash Solutions”, “Consulting Services”, and “Care and Justice Services”.

The Complainant has numerous registrations for the G4S trademark around the world.

The Complainant is, inter alia, the owner of:

European Union Trade Mark G4S (word) registration number 015263064, registered on September 20, 2016;

International Trademark G4S (word) registration number 885912, registered on October 11, 2005;

United States Trademark G4S (word) registration number 3378800, registered on February 5, 2008;

The Complainant uses its main website “ (registered on December 1, 1999) to market its global offerings.

The Complainant holds numerous domain names incorporating the Complainant’s G4S trademark with country-code Top-Level Domain (“ccTLD”) extensions, e.g., <g4s.cz>, <g4s.us>, <g4s.cn>, and <g4s.in>.

The Complainant has also established a social media presence and uses the G4S trademark to promote its services under this name, in particular on:

- Facebook: “
- X (f.k.a.Twitter): “
- LinkedIn: “
- Instagram: “

- YouTube: “

The disputed domain names were registered between March 22, 2023, and April 4, 2024.

According to the documents provided with the Complaint, the disputed domain names resolved (at least on February 28, 2024) to webpages which display Pay-Per-Click (“PPC”) advertisement links. Three of the disputed domain names redirected users to non-operational PPC advertisement links, whereas the

remaining 24 domain names redirected users to both unrelated third-party websites and websites that offer
products and services in competition with those of the Complainant.

The Complainant provides evidence that it first sought to settle this matter amicably through a cease-and-desist letter sent to the Respondent on July 5, 2023, to which it received no answer.

page 3

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 names.

Notably, the Complainant contends that the disputed domain names are all confusingly similar to the G4S trademark in which the Complainant has rights. More specifically, nine of the disputed domain names incorporate the G4S trademark in its entirety, with the addition of unrelated terms. Two of the disputed domain names contain the G4S trademark in its entirety, with the addition of letters, which are typical examples of typo-squatting. Four of the disputed domain names contain the G4S trademark in its entirety, with the addition of geographical indications. One disputed domain name is identical to the Complainant’s G4S trademark. In addition, eleven of the disputed domain names consist of additional terms such as “security”, “government services”, “hq”, “retail solutions”, etc., which convey the impression that the disputed domain names are used to offer the Complainant’s services to Internet users.

Moreover, the Respondent has no prior rights or legitimate interests in the disputed domain names. The Complainant has neither licensed nor otherwise permitted the Respondent to use any of its trademarks or to register domain names incorporating the G4S trademark. There is also no proof that the Respondent is commonly known by the term G4S or any similar term. In addition to this, the Respondent is making neither a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the disputed domain names.

The disputed domain names all resolved to webpages which displayed PPC advertisement links, which redirected users to both unrelated third-party websites and websites that offer products and services in competition with those of the Complainant. The Respondent also advertises 25 of the disputed domain

names for sale on the platform “ for USD 599.

In addition to this, the Complainant submits that the disputed domain names have been registered and used in bad faith. In support of this claim, the Complainant underlines that given the global renown of the Complainant and the Respondent’s use of the Complainant’s trademarks in the disputed domain names, it is clear that the Respondent was aware of the Complainant’s rights in the G4S trademark when it registered the disputed domain names. Moreover, the Complainant notes that the Respondent did not respond to the Complainant's cease-and-desist letter, and that the Respondent’s pattern of bad faith registrations can be seen in previous UDRP decisions against it where the Respondent registered domain names which consisted of renowned brands, namely PROMOD, TOMMY BAHAMA, AMUNDI, SODEXO, and NEUSCHWANSTEIN. Finally, the Complainant notes that the Respondent has registered other domain names apparently infringing on third-party trademarks such as <fedex-express.us>, <aliexpress.us>, <geforce-drivers.us>, and <michaelkorsoutletsale.us>.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(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

page 4

(iii) the disputed domain names have been registered and are being used in bad faith

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 and recognizable within the disputed domain names. Accordingly,
the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.

Although the addition of other letters, or terms, such as “usa”, “market”, “fitness”, “security”, “government services”, “hq”, and “‘retail solutions”, among others, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

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 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 names. 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 names such as those enumerated in the Policy or otherwise. The use of the disputed domain names for PPC pages, as well as being advertised for sale on third party websites, reflects the Respondent’s intent to use such confusingly similar disputed domain names for its commercial advantage, which cannot constitute fair use nor represents a bona fide offering of goods or services.

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.

page 5

In the present case, the Panel notes that the Respondent was aware of the Complainant’s trademark registrations and rights to the G4S trademark when it registered the disputed domain names. In fact, given that G4S is not a common or descriptive term, and that the Respondent chose to register 27 domain names all containing the Complainant’s trademark, it is clear that the Respondent intentionally targeted the Complainant and its trademark in an attempt to mislead, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. Moreover, the Respondent has composed a number of the disputed domain names by coupling the Complainant’s trademark with terms descriptive of the Complainant’s services and industry (e.g., “claims”, “government services”, “security”, “gov”, among others), which further reinforces the notion that the Respondent likely knew of the Complainant and its trademark.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

By using the disputed domain names for pages displaying PPC advertisement links, the Panel notes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. Such use constitutes bad faith pursuant to paragraph

4(b)(iv) of the Policy.

In addition, 25 out of 27 of the disputed domain names are offered for sale at a price that likely far exceeds the out-of-pocket costs for the registration of a domain name.

Moreover, it appears that the Respondent has been engaged in a pattern of bad faith registration and use of domain names corresponding to third-party trademarks. See, for example, Bulgari S.p.A. v. Jerry Anderson, WIPO Case No. D2024-0504, Amundi Asset Management v. Jerry Anderson, WIPO Case No.

DCO2023-0048, and Sodexo v. Jerry Anderson, WIPO Case No. DCO2023-0023.

Finally, a finding of registration and use in bad faith is also supported by the lack of response. The a Response in order to rebut the claims from the Complainant in this proceedings.

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

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 <ca-g4s.com>, <comg4s.com>, <ess-g4s.com>,
<g4sbenefitnow.com>, <g4sclaims.com>, <g4sconnections.net>, <g4sdevlever.com>, <g4-security.com>,
<g4sfit.com>, <g4sfitness.com>, <g4sgameday.com>, <g4sgov.com>, <g4sgovernmentservices.com>,
<g4shq.com>, <g4smarket.com>, <g4snl.com>, <g4spintowin.com>, <g4sprogamersleague.com>,
<g4sretailsolutions.com>, <g4ssecurecommand.com>, <g4ssss.com>, <g4supplements.com>, <g4s.wang>,
<myessg4s.com>, <usag4sjobs.com>, <usajobg4s.com>, and <wg4s.com> be transferred to the

Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: April 23, 2024