The Complainant is G4S Plc, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Le Van Quyen, Viet Nam.
The disputed domain name <g4svietnam.net> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, 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.
On November 4, 2019, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent sent an email communication in English to the Center on November 22, 2019. On December 17, 2019, the Center sent an email regarding Commencement of Panel Appointment to the Parties.
The Center appointed Teruo Kato as the sole panelist in this matter on January 22, 2020. 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.
The Complainant is a British security services company founded in 1901 that has traded under its current name “G4S” since 2004 when the two companies Group 4 Flack and Securicor merged. It provides security products, services and solutions across six continents, employing over 585,000 people worldwide, with operations in over 100 countries. Its revenue for the year 2017 was GBP 7.8 billion.
The Complainant is the proprietor of a substantial number of registered trademarks comprising G4S, including European Union trademark G4S (word) No. 015263064, registered on September 20, 2016 and United States of America trademark G4S (word) No. 3378800, registered on February 5, 2008, as set out in section 6.2 A below.
The disputed domain name was registered on August 31, 2019. According to the Complainant, it is active and resolves to a website allegedly offering security services under the name of “G4S Security Services Vietnam”.
The Respondent did not respond to a cease-and-desist letter sent on behalf of the Complainant in September 2019.
The Complainant contends that it is the owner of various trademarks including G4S.
The Complainant also contends that the disputed domain name incorporates the G4S trademark and that the disputed domain name is confusingly similar to the Complainant’s G4S trademark.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark G4S, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, it would add unnecessary costs to the Complainant and will delay in commencement of proceedings.
The Complainant also contends that the website on the disputed domain name shows that the Respondent has a working knowledge of the English language and submits evidences in support thereof.
The Panel notes that information of these proceedings was given to the Respondent both in English and Japanese and that no communication was received from the Respondent, other than an email from the Respondent to the Center dated November 22, 2019 in English.
In that email the Respondent stated that “I am hearing your the domain name as my using ‘g4svietnam.net’. This was registered and accepted by vietnam law. If you need more information, contact with the supplier who submitted the domain name and ask them to buy it Best regard”.
In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English will be the language of the proceeding.
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of G4S registered trademarks, including inter alia:
- European Union trademark G4S (word) No. 015263064, registered on September 20, 2016, covering goods and services in classes 6, 36, and 37.
As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the G4S trademark in which the Complainant has rights.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he 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”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark G4S and the geographical term “vietnam”. The Panel finds that that the recognizable element of the disputed domain name is the trademark G4S, which is identical to the Complainant’s trademark.
It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of any term does not prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong, WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen, WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan, WIPO Case No. D2014-1290).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant contends that “the Respondent lacks rights and legitimate interests in the disputed domain name”, that “the Respondent has never been authorised or licensed to provide services under the ‘G4S’ brand. The Respondent, is, in any case, not affiliated with the Complainant” and that “the Respondent has never been commonly known by the domain name and has neither registered the domain name as a trademark or acquired common law rights by way of widespread use over the years”.
The Complainant also contends that “[t]he fact that the disputed domain name offers services in connection to security allows the Complainant to show that the Respondent is making a commercial gain out of the domain name, either directly or indirectly via the content on the webpage …. the Respondent is trading here, for commercial gain, on the good name and reputation of the Complainant’s business, and unfairly attracts users to another website” and that “the Respondent is misleading consumers by diverting them to their own website, which advertises services similar to that of the Complainant, i.e. security services.”
The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and is using the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on that website or location.
The Panel notes and accepts that the trademark G4S was registered and is known internationally before the disputed domain name was registered on August 31, 2019.
Therefore, the Panel holds that the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant contends, among others, that “[t]he Respondent uses the Complainant's exact logo but altered the colours from red, black and white to red, green and white” and that “the Respondent has intentionally attempted to attract Internet users to its website, by creating confusion among users as it incorporates the Complainant’s mark in the domain name and logo on the website, even though the domain name is neither affiliated nor endorsed by the Complainant” and that “this constitutes bad faith registration and use of the disputed domain name”.
The Complainant submitted materials to support such contentions, including “Screenshots of content on <g4svietnam.net>”. The Respondent was given an opportunity to raise its objection to the contentions made by the Complainant but has not done so.
Under the circumstances, the Panel considers such registration and use to amount to bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
In the premises, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the third requirement of the Policy has been met.
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 <g4svietnam.net> be transferred to the Complainant.
Teruo Kato
Sole Panelist
Date: February 3, 2020