G4S Limited v Zakiyullah Parkar, Sole Owner

WIPO Case No. D2024-4797

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

G4S Limited v. Zakiyullah Parkar, Sole Owner

Case No. D2024-4797

1. The Parties

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

The Respondent is Zakiyullah Parkar, Sole Owner, India.

2. The Domain Name and Registrar

The disputed domain name <g4s-allied.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2024. On November 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 (Registration Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 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 November 22, 2024.

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 the Respondent of the Complaint, and the proceedings commenced on November 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 16, 2024.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 19, 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 is a global security services provider, established in 2004 through the merger of two prominent security companies, Group 4 Falck and Securicor.

The Complainant operates in various sectors, offering security solutions such as cash management services, risk consulting, and the provision of manned security personnel.

The Complainant is no longer publicly traded and now operates under the name G4S Limited.

The Complainant has a well-established reputation in providing integrated security solutions in over 90 countries.

The Complainant has acquired widespread consumer goodwill, having operated for over a century and under the G4S brand for more than 15 years. As part of its efforts to protect its intellectual property, the Complainant has registered numerous trademarks for the G4S term and these cover a wide range of jurisdictions. The Complainant notes that a number of its trademarks were registered under the name and address of its previous corporate identity (i.e. G4S plc) before it was registered as G4S Limited.

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,
and 37;
-	United States Registration (“Reg.”) No. 3378800, G4S, Reg. date February 05, 2008 – Classes 9, 39,
and 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, and 45.

The Complainant operates also multiple domain names incorporating the G4S trademark, including the primary domain name <g4s.com>, used for its global operations.

The Respondent in this administrative proceeding is Zakiyullah Parkar, located in India.

The disputed domain name was registered on September, 27 2024.

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 contends that:

- The disputed domain name features the G4S mark in its entirety in addition to the term “allied” which proceeds the mark, separated by a hyphen. The G4S mark remains recognizable in the disputed domain name, deeming the addition of this descriptive term inconsequential to a finding of confusing similarity.

- To the best of the Complainant’s knowledge, the Respondent does not have any trademark rights to the G4S term. There is also no evidence that the Respondent retains unregistered trademark rights to the term G4S. Neither has the Respondent received any license from the Complainant to use domain names featuring the G4S trademark. All active trademarks for the term G4S are held by the Complainant.

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Paragraph 4(c) of the Policy stipulates some circumstances where the Respondent can demonstrate a right or legitimate interest in a domain name. The Complainant submits that none of the circumstances apply in this case.

- The Respondent has not used, nor prepared to use, the disputed domain name in connection with a

bona fide offering of goods or services. The disputed domain name currently resolves to a parked webpage
hosted by GoDaddy, LLC. As such, it is being passively held. Instead, the Respondent has deliberately
registered a domain name that is confusingly similar to the distinctive mark G4S.

- The Complainant’s trademark registrations predate the creation date of the disputed domain name by at least 19 years and substantial goodwill has been accrued since the Complainant’s establishment in 1901.

- The G4S name has become synonymous with its offerings and services within its industry.

- Searching “G4S” on popular Internet search engines such as Google list the Complainant’s brand and services as the first result. Moreover, any average Internet user has access to G4S trademark registrations, as they can be found on public trademark databases.

- The Respondent registered the disputed domain name in bad faith, with the primary intention of taking advantage of the Complainant’s brand.

- Upon identifying the registration of the disputed domain name, a cease and desist notification was sent out to the Respondent on October 9, 2024, to which the Respondent provided no response.

- The Respondent’s activation of a mail exchange (MX) record for the disputed domain name

emphasises the risk that could be caused to unsuspecting customers of the Complainant on receipt of emails evidently implied affiliation with the disputed domain name due to the Complainant’s G4S trademark.

from the disputed domain name. The Complainant submits that the presence of MX records suggests the

B. Respondent

Although procedurally summoned, the Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

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 disputed domain name features the G4S mark in its entirety in addition to the term “allied” which proceeds the mark, separated by a hyphen.

The Panel notes that the G4S mark remains recognizable in the disputed domain name, deeming the addition of this descriptive term inconsequential to a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).

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With respect to the generic top-level domain “.com” featured in the disputed domain name, the Complainant requests that the Panel disregards it under the first element as it is a standard registration requirement and can cannot prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.11.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Accordingly, 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.

As asserted by the Complainant, the Panel notes that the Respondent appears to not hold any trademark rights to the G4S term. There is also no evidence that the Respondent retains unregistered trademark rights to the term G4S. Neither has the Respondent received any license from the Complainant to use domain names featuring the G4S trademark. All active trademarks for the term G4S are held by the Complainant.

Paragraph 4(c) of the Policy stipulates some circumstances where the Respondent can demonstrate a right or legitimate interest in a domain name. According to the Complainant none of the circumstances apply in this case.

The Panel notes that:

- 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 disputed domain name currently resolves to a parked webpage hosted by GoDaddy, LLC which
indicates that it is being passively held. Passive holding of a disputed domain name alone does not

constitute a bona fide offering of goods or services under the Policy.

- The Respondent has deliberately registered a domain name that is confusingly similar to the

distinctive mark G4S, as the Complainant’s trademark registrations predate the creation date of the disputed
domain name by at least 19 years and substantial goodwill has been accrued since the Complainant’s
establishment in 1901.

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.

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Moreover, the composition of the disputed domain name, incorporating the Complainant’s G4S mark with the
term “allied”, which corresponds to the corporate entity, Allied Universal, that acquired the Complainant in

2021, carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.

Accordingly, 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 notes as indicative for the Respondent’s bad faith registration and use three circumstances documented by the Complainant, namely:

- The Respondent passively holds the disputed domain name.

- The Respondent never replied to the cease and desist letter sent by the Complainant.

- The Respondent activated a mail exchange (MX) record for the disputed domain name.

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. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. “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 the presumption of bad faith”. WIPO Overview 3.0, section 3.1.4.

Panel decisions have stated that a lack of reply to a cease and desist notice prior to commencing the proceedings may support an inference of bad faith behavior on identifying the registration of the disputed domain name. The Panel notes that a cease and desist notification was sent out to the Respondent on October 9, 2024, but the Respondent provided no response.

The presence of MX records has been found by panelists in previous disputes to support a finding of bad may be put.

faith in certain circumstances. The Panel notes the Respondent’s activation of a mail exchange (MX) record
for the disputed domain name and agrees with the Complainant that such activation creates a risk that the
disputed domain name could be used to send email communications impersonating the Complainant,
particularly given the evidently implied affiliation caused by the composition of the disputed domain name,
the Respondent’s lack of Response to either the Complainant’s cease and desist notification or the present
Accordingly, 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 <g4s-allied.com> be transferred to the Complainant.

/Dr. Beatrice Onica Jarka/
Dr. Beatrice Onica Jarka
Sole Panelist
Date: January 2, 2025