G4S Limited v Md Billal Hossain
WIPO Case No. D2024-2768
•20-09-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
G4S Limited v. Md Billal Hossain
Case No. D2024-2768
1. The Parties
The Complainant is G4S Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Md Billal Hossain, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <uniqueg4ssecurity.com> (the “Disputed Domain Name”) is registered with PDR
Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2024. On July 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 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 July 18, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 7, 2024. The Respondent sent 3 email communications to the
Center, one on July 18, 2024, and two on August 17, 2024.
Pursuant to paragraph 6 of the Rules, on August 26, 2024, the Center informed the Parties that it would proceed with the panel appointment process.
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The Center appointed Nicholas Weston as the sole panelist in this matter on September 6, 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
around 90 countries through a network of 800,000 employees across the world and has been operating
under its current name, G4S, since 2004. The Complainant company holds registrations for the trademark
G4S and variations of it in numerous jurisdictions, including, for example, International Registration No
885912 for the mark G4S registered on October 11, 2005.
The Complainant owns the domain name <g4s.com>, which resolves to its main website.
The Respondent registered the Disputed Domain Name on July 13, 2023. It resolves to a webpage that offers services the same or similar to those offered by the Complainant.
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.
Notably, the Complainant cites its trademark registrations in numerous countries for the mark G4S, as prima facie evidence of ownership.
The Complainant submits that its rights in the G4S mark predate the Respondent’s registration of the
Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark,
because the Disputed Domain Name is comprised of the G4S trademark and that the addition of the words
“unique” and “security” are not sufficient to avoid the confusing similarity to its trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name and that “[f]ollowing the Complainant’s sending of a cease and desist letter, the
Respondent claimed to have registered a company named “Unique G4S Security Services Limited”
…[which]…is not sufficient to demonstrate rights in the G4S term… particularly so given the aforementioned
strong global reputation in the distinctive G4S mark.”
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and substantial reputation of the Complainant’s trademark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions, but, in response to receipt of the Center’s Written Notice, noted in their communications that they “are considering the matter mentioned in the notice and taking necessary action as soon as possible”.
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6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
| and | |
| (iii) | that the Disputed Domain Name has been registered and is 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. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark G4S in numerous countries.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the G4S trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) the word “unique”; (b) followed by an exact reproduction of the Complainant’s trademark G4S; (c) followed by the word “security”; (d) followed by
the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “uniqueg4ssecurity”.
The Panel finds the entirety of the mark G4S is reproduced within the Disputed Domain Name. Accordingly,
the Disputed Domain Name is confusingly similar to the marks for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
Although the addition of the words “unique” and “security” 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 Name 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
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relevant evidence demonstrating rights or legitimate interests in the Disputed 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 Panel notes the evidence that “[f]ollowing the Complainant’s sending of a cease and desist letter, the Respondent claimed to have registered a company named “Unique G4S Security Services Limited””. The Panel observes that the WhoIs information related to the Disputed Domain Name indicates the Registrant is
Md Billal Hossain rather than “Unique G4S Security Services Limited.” There is no evidence on the record of when that company name was registered or any other evidence demonstrating the Respondent has been commonly known by the Disputed Domain Name. Having made contact with the Complainant, the Respondent has subsequently failed to come forward with any evidence to demonstrate its rights or legitimate interests in the Disputed Domain Name. The Panel further notes that even if such name was adopted by the Respondent as its company’s name, that in itself would not have been sufficient to give rise to rights or legitimate interests in the Disputed Domain Name, particularly noting that the Complainant provides security 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.
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.
In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
| “substantial renown” of the Complainant’s trademark, and the evidence which shows that the Complainant | On the issue of registration, taking into account the composition of the Disputed Domain Name, the widespread recognition around the world especially with regard to security solutions”)). |
| This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to target the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview 3.0, section 3.1.4. |
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Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Names some 18 years after the Complainant established registered trademark rights in the G4S mark.
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name resolves to a webpage the offers the same or similar services to those supplied by the Complainant. Targeting of this nature is a common example of bad faith as referred to in paragraphs 4(b)(iii) and 4(b)(iv) of the Policy and identified in many previous UDRP decisions. WIPO Overview 3.0, sections 3.1.3, 3.1.4 and 3.2.1.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain
Name constitutes bad faith under the Policy.
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 Name <uniqueg4ssecurity.com> be transferred to the Complainant.
/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: September 20, 2024
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