G4S Limited v 胡雪 (Ni Cary)

WIPO Case No. D2022-1242

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. 胡雪 (Ni Cary)

Case No. D2022-1242

1. The Parties

Complainant is G4S Limited, United Kingdom (“UK”), represented by SafeNames Ltd., UK.

Respondent is 胡雪 (Ni Cary), China.

2. The Domain Name and Registrar

The disputed domain name <g4s.online> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2022. On April 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2022, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on April 11, 2022, providing the registrant and contact information
disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
Complainant filed an amended Complaint in English on April 12, 2022.

On April 11, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 12, 2021, Complainant submitted its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.

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 Respondent in English and response. Accordingly, the Center notified Respondent’s default on May 12, 2022.

Chinese of the Complaint, and the proceedings commenced on April 21, 2022. In accordance with the

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The Center appointed Yijun Tian as the sole panelist in this matter on May 23, 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 Rules, paragraph 7.

4. Factual Background

A. Complainant

Complainant, G4S Limited, is a company incorporated in London, UK. Founded in 1901, Complainant is a world leading security company which 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 (Annex 4 to the Complaint).

Complainant has exclusive rights in the G4S marks. Complainant is the owner of several G4S marks
worldwide, including a United States trademark registration for G4S, registered since February 8, 2008
(registration number 3378800); and International trademark registration for G4S registered, covering also
China, since October 11, 2005 (registration number 885912). Complainant also operates several domain
names which contain the G4S mark in its entirety, such as <g4s.com> (registered in 1999), <g4s.cz>

(registered in 2003), <g4s.us> (registered in 2004), and <g4s.cn> (registered in 2005).

B. Respondent

Respondent is 胡雪 (Ni Cary), China.

The disputed domain name was registered on December 21, 2021, long after the G4S marks were registered. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical to Complainant’s trademark G4S, as it incorporates Complainant’s trademark in its entirety with no additions or adornments.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith. owners of trademarks from reflecting their mark in corresponding domain names.

Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the

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Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:

(a)	there is evidence to show that Respondent understands the English language. This is displayed through Respondent’s registration of <g4s.online>, which features the English dictionary term “online” in the extension of the disputed domain name;
(b)	Respondent holds an extensive domain portfolio, which comprises many English dictionary terms, this includes but is not limited to domain names such as: <bluesky.website>, <bonus.fun>, and <brick.ink> (see Annex 17 to the Compliant);
(c)	the Cease and Desist letter sent to Respondent (see Annex 16 to the Complaint) was written in English. Following receipt of this notice, Respondent removed the content displayed on the website at the disputed domain name (see Annex 11 to the Complaint). This suggests that Respondent is at the very least competent in English and understands the English language; and
(d)	the commission of a translator would add unnecessary costs to Complainant, who already bears the cost of filing and will cause a delay in the commencement of the proceeding; such action is contrary to the drafter of the Policy’s intentions, which is to provide a cost-effective and expedited resolution

process.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). Section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules
vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also
ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to

present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a
language other than that of the registration agreement. Such scenarios include (i) evidence showing
that the respondent can understand the language of the complaint, (ii) the language/script of the domain
name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage
under the disputed domain name, (iv) prior cases involving the respondent in a particular language,
(v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering
the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names
registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain
names, the use of a particular language agreement for some (but not all) of the disputed domain names,
(ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending
to show that it would not be unfair to proceed in a language other than that of the registration

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agreement.” (See also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

On the record, Respondent appears to be located in China and is thus presumably not a native English speaker, but considering the following aspects, the Panel has decided that the language of the proceeding shall be English: (a) the disputed domain name is registered in Latin characters, rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain name “.online” is an English word; (c) after receiving the Cease and Desist letter sent to Respondent, which was written in English, Respondent removed the content displayed on the website at the disputed domain name; (d) the Center has notified Respondent of the language of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center also notified Respondent in both Chinese and English of the Complaint, and informed Respondent that it would accept a response in either English or Chinese, but Respondent chose not to file any response.

Considering these circumstances, the Panel finds that the choice of English as the language of the present
proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the
arguments for this case. Having considered all the matters above, the Panel determines under paragraph
11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in

English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, paragraphs 4(a) - (c), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the G4S marks acquired through registration. The G4S marks have been registered internationally (covering China) since 2005.

The disputed domain name comprises the G4S mark in its entirety. The disputed domain name only differs
from Complainant’s trademarks by the addition of the gTLD “.online”. In relation to the gTLD, WIPO

Overview 3.0, section 1.11 states:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a
standard registration requirement and as such is disregarded under the first element confusing
similarity test. […] The practice of disregarding the TLD in determining identity or confusing similarity
is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’).”

Thus, the Panel finds that disregarding the gTLD “.online”, the disputed domain name is identical to the G4S marks in which Complainant has rights.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that
Respondent has rights or legitimate interests in the disputed domain name:

(i)        before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable

preparations to use, the disputed domain name or a name corresponding to the disputed domain name in
connection with a bona fide offering of goods or services; or

(ii)       Respondent has been commonly known by the disputed domain name, even if Respondent has

acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks at issue.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, founded in 1901, Complainant is a world leading security company which 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 (Annex 4 to the Complaint). Complainant has rights in the G4S marks including International registration covering China since at least 2005, which long precedes Respondent’s registration of the disputed domain name (in 2021).

Moreover, Respondent is not an authorized dealer of G4S-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(i) there has been no evidence adduced to show that Respondent is using the disputed domain name in

connection with a bona fide offering of goods or services. On the contrary, the disputed domain name does
not resolve to an active website;

(ii)       there has been no evidence adduced to show that Respondent has been commonly known by the

disputed domain name. There has been no evidence adduced to show that Respondent has any registered
trademark rights with respect to the disputed domain name. Respondent registered the disputed domain
name in 2021, long after the G4S marks became internationally known. The disputed domain name is

identical to Complainant’s G4S marks; and

(iii) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial the disputed domain name for sale on “ (Annex 13 to the Complaint). or fair use of the disputed domain name. The disputed domain name does not resolve to an active website. But Respondent has used the disputed domain name to host a “ webpage (Annex 12 to the

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The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i)        circumstances indicating that Respondent has registered or acquired the disputed domain name

primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration
to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for
valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the
disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has
engaged in a pattern of such conduct; or

(iii)      Respondent has registered the disputed domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on the website or location.

Upon the evidence of the circumstances in this case, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the G4S marks with regard to its products and services. As mentioned above, Complainant has registered its G4S marks internationally (covering China) since 2005. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2021). Further, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See 3.1.4 of the WIPO Overview 3.0.

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also

Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No.

D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Used in Bad Faith

Complainant has adduced evidence to show that the disputed domain name does not resolve to an active website. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Section 3.3 of the WIPO Overview 3.0 provides: “[w]hile

panelists will look at the totality of the circumstances in each case, factors that have been considered
relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the

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complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to

which the domain name may be put.”

As discussed above, Complainant’s G4S marks are distinctive and widely known. Further, given the lack of response, the Panel cannot envision any other plausible use of the disputed domain name that would not be in bad faith under the present circumstances. Taking into account all the circumstances of this case, the

Panel concludes that the non-use of the disputed domain name by Respondent also constitutes bad faith.

Furthermore, as noted above, the disputed domain name is offered for sale as a premium domain name for
USD 200 at “ website, which may be further evidence of bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the G4S mark, intended to ride on the goodwill of this trademark. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the use of the disputed domain name are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <g4s.online> be transferred to Complainant.

/Yijun Tian/
Yijun Tian
Sole Panelist
Dated: June 16, 2022