Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 04683

Group 4 Securicor plc

and

Harry Makings

Decision of Independent Expert

1. Parties:

Complainant: Group 4 Securicor plc

Country: GB

Respondent: Harry Makings

Country: GB

2. Domain Name:

g4s.co.uk

3. Procedural Background:

On 08/05/2007 the Complainant's online complaint was received by Nominet and the hard copy arrived the following day. A copy of the complaint was sent to the Respondent by Nominet on 09/05/2007 but no response was received by the deadline of 04/06/2007 and the Complainant was informed of this. Mediation was therefore not possible and on 07/06/2007 the fee was received from the Complainant to refer the matter to an Expert. The first Expert to which the matter was referred was unable to deal with it due to a potential conflict and on 14/06/2007 I was selected as the Expert.

4. Outstanding Formal/Procedural Issues (if any):

None

5. The Facts:

The Complainant is a substantial and well known international business involved in the provision of security services. The business was formed in 2004 as a result of the merger of Securicor Plc and Group 4 Falck A/S. Since then, the Complainant has traded under the "G4S" name and has several subsidiary companies that include "G4S" in their name. The Complainant company was itself incorporated on 11 December 2003 as Precis (2395) Limited and changed its name to Group 4 Securicor Limited on 19 February 2004. The Complainant company then went public and was listed on the London and Copenhagen Stock Exchanges on 20 July 2004 as Group 4 Securicor plc.

The Domain Name was registered by the Respondent on 2 February 2004. The Domain Name has not been used by the Respondent and on 17 June 2005 the Respondent contacted the Complainant by email offering to sell the Domain Name.

6. The Parties' Contentions:

Complainant:

In summary the Complainant says that:

•    The Complainant has Rights in the Domain Name because:

it has subsidiaries registered at Companies House including G4S Security Services (UK) Limited, G4S International UK Limited, G4S Justice Services Limited, and G4S Cash Services (UK) Limited;

it trades internationally under the name G4S and has done so since 2004 and is known as "G4S";

it has registered European Community trade marks comprising "G4S" including number 004613378 (registered on 14 March 2007 but filed on 26 September 2005) and trade mark number 004645321 (registered on the 29 March 2007, but filed on the 10 October of 2005). It also has a number of European and American trade marks that are filed and pending which consist of variations and permutations of the G4S and Group 4 Securicor marks;

the Domain Name g4s.co.uk is identical to G4S in which the Complainant has rights. The Complainant was formed in 2004 as result of a merger between Securicor Plc and Group 4 Falck A/S. It went public and was listed on the London and Copenhagen Stock Exchanges on 20 July 2004 and is a global leader in the provision of security services; and

it owns many global domain names including g4s.be (Belgium), g4s.com, g4s.com.au (Australia), g4s.com.cn (China), g4s.cz (Czech Republic), g4s.dk (Denmark), g4s.eu (Europe), g4s.fr (France), g4s.hk (Hong Kong).

•    The Respondent has no affiliation with G4S and at no point was the Respondent licensed to or permitted to use the Complainant's trade marks for the registration of the Domain Name.

•    The Respondent contacted the Complainant and offered the Domain Name for sale to it but the Respondent, after this initial contact, became elusive and the Complainant was not able to discuss the sale of the Domain Name any further.

•    The Domain Name in the hands of the Respondent is abusive because:

it was primarily registered for the purposes of selling, renting or otherwise transferring it to the Complainant for a price greater than the cost incurred in purchasing the Domain Name. In support of this the Complainant says that the Domain Name was registered at the time of the announcement of the impending merger of Securicor and Group 4 Falck A/S. The Respondent registered this domain name as a opportunistic cyber squatter, with no intention to provide or offer bona fide goods or services in respect of the Domain Name;

it was primarily registered as a blocking registration against a name or mark in which the Complainant has rights. In support of this the Complainant says that the Respondent has no direct interest in the Domain Name, does not trade under that name, is not known as g4s, and has indicated that he has no intention of using the Domain Name;

it was primarily registered to unfairly disrupt the Complainant's business because if anyone attempts to legitimately access the G4S UK site and mistakenly enters the co.uk suffix, they are met with a blank screen and this is resulting in the loss of potential clients and custom from the United Kingdom, who mistakenly believe that G4S do not have a UK website; and

it is one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names and brands in which the Respondent has no apparent interest.

Respondent:

The Respondent has not responded to the complaint

7. Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:

8. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
9. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet DRS Policy as follows:

•    Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

•    Abusive Registration means a Domain Name which either:


i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or


ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

Complainant's Rights

The Complainant has provided:

•    printouts from Companies House for its subsidiary companies that incorporate "G4S" in their name;

•    printouts from its website giving details of the history, international profile and very substantial business of the Complainant trading under the "G4S" name;

•    details of its European Community and other trade marks, including a CTM word mark for G4S; and

•    details of its other domain names that incorporate "g4s".

In the circumstances, I have no doubt that the Complainant does have Rights in the name G4S and that it is a name or mark which is identical or similar to the Domain Name. It is identical, ignoring the .co.uk suffix.

Abusive Registration

From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 of the DRS Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant:

Paragraph 3 a. i. A "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"

Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."

The Respondent made contact with the Complainant by an email on 17 June 2005 and offered the Domain Name for sale to it. The email said:

" Hello,

My name is Harry Makings and own the web domain name g4s.co.uk which was purchased with a view to online graphic novel promotions through our design company. We now are not pursuing this and consequently are looking to sell the domain name on to someone who will use it constructively.

If you are interested in this domain name please email me at harry@g4s.co.uk.

You will be in competition with a music company and an electronics company.

I look forward to hearing from you.

Kind Regards

Harry Makings"

The Complainant says that there were numerous press releases available prior to the completion of the merger of Securicor Plc and Group 4 Falck A/S. An example is provided in Exhibit 9. The Complainant therefore concludes that when the Respondent registered the Domain Name he was aware of the impending merger of Group 4 and Securicor to form the Complainant, and possessed the intention to sell the Domain Name to the Complainant and that when the Respondent contacted the Complainant he was aware of the Complainant and had knowledge of the Complainants rights in G4S and possessed the intention to sell the Domain Name for in excess of the out of pocket costs for the Domain Name.

On the evidence before me there seems little doubt that when the Respondent contacted the Complainant on 17 June 2005 he will have been aware of the Complainant and its rights in the G4S name. The Complainant is a very large and well known international business. According to the documents submitted by the Complainant it operates in over 100 countries and employs about 470,000 people, and is the largest security company in the UK.

However, the point that troubles me is that the Domain Name was registered by the Respondent on 2 February 2004. The merger of the Securicor and Group 4 businesses to form what became known as G4S took place in July 2004. The Complainant says that there were numerous press releases available prior to the completion of the merger and provides "an example" in Exhibit 9. That exhibit is a copy of part of the "Press Releases & News" section of the Complainant's website at www.g4s.com/uk. It shows the result of a search for items from 1 February 2004 to 1 March 2004. Of the three press release entries listed in the search results, the only one that appears to be relevant and which has been exhibited by the Complainant is the one dated 24 February 2004 with the headline "Group 4 Falck and Securicor announce merger to create a global leader in security services".

This press release is three weeks after the Domain Name was registered by the Respondent. It is the only evidence submitted by the Complainant in support of its claim that, as at 2 February 2004 when the Domain Name was registered, the Respondent was at that time aware of the Complainant's rights in the G4S name. The Complainant has provided no evidence to show that as at 2 February 2004 it had any Rights at all in the G4S name. The earliest it can point to is the change of the Complainant's name from Precis (2395) Limited to Group 4 Securicor Limited on 19 February 2004 and the announcement of the merger on 24 February 2004. Even then, the intention to use the G4S name was not actually mentioned in the press release, although its subsequent possible use might have been an obvious possibility at that stage.

The Complainant has also exhibited printouts of other domain names that it owns and which comprise the g4s name, being g4s.be (Belgium), g4s.com, g4s.com.au (Australia), g4s.ru (Russia), g4s.cz (Czech Republic), g4s.dk (Denmark), g4s.eu (Europe), g4s.fr (France), g4s.hk (Hong Kong). It says it also has g4s.com.cn (China) but no printout for this was exhibited. Where original registration dates are shown on the exhibited printouts for these domain names they all date from after the Respondent's registration of the Domain Name and after the press release announcement of the intended merger between Group 4 and Securicor, apart from two of them. Those two are g4s.dk and g4s.cz.

The g4s.dk Danish domain name is said to have been registered on 17 December 2001 and is now held by the Complainant. However, it cannot have been originally registered by the Complainant as the Complainant company did not exist at that time and no explanation has been provided by the Complainant as to how or when it acquired that domain name.

The g4s.cz Czech Republic domain name is said to have been registered from 27 January 2003. The holder is said to be a company called Group 4 Securitas a.s., and which is said to have been the holder "From 2003-01-27". However, no explanation has been provided by the Complainant to show its connection to Group 4 Securitas a.s, or how the Complainant might claim to be able to rely on any rights that the Group 4 Securitas a.s. company may have had in the G4S name prior to the merger of Group 4 and Securicor and which might have suggested that the registration of the Domain Name by the Respondent was abusive. I am left to guess. In the circumstances, I am not in a position to take it into account.

Exhibit 10 submitted by the Complainant is the results page of the first 10 results of a Google search for "g4s" made on 1 May 2007. Eight of the results relate to the Complainant, but two of them relate to the Apple Mac G4 range of laptop computers. I understand they were sold between 2001 and 2006 and were often known colloquially as "G4s".

I am mindful of the fact that the Respondent has chosen not to take up the opportunity to respond to the complaint and, in particular, to challenge the Complainant's assertion that the registration of the Domain Name is abusive because the Respondent was at that time aware of the Complainant's rights in the G4S name. I can, in appropriate circumstances, draw adverse inferences from a failure to respond to a complaint.

However, I am also mindful that the Complainant still has to prove its case. It is possible that the Respondent's registration of the Domain Name on 2 February 2004 was intended as a possible link to or association with Apple Mac G4s. However, even if that were the case, the Apple computers business is not and never has been a competitor of the Complainant. It is also possible that the registration of the Domain Name was pure coincidence and was in fact, as claimed by the Respondent in his email, "purchased with a view to online graphic novel promotions through our design company", and that the subsequent merger of Group 4 and Securicor and their adoption of the G4S name was simply fortuitous for the Respondent.

The evidence submitted by the Complainant suggests that, as at 2 February 2004 when the Domain Name was registered, the Respondent could not have been aware of the intended merger of Group 4 and Securicor as the announcement of the intended merger was not made until 24 February 2004. Such announcements are, generally speaking, well guarded secrets, particularly if it involves stock market price sensitive information. There is no evidence before me to suggest that the Respondent was somehow privy to inside information three weeks ahead of the merger announcement.

In the circumstances, I am not satisfied on the balance of probabilities on the evidence before me that, at the time he registered the Domain Name, the Respondent did so for the purposes mentioned in paragraph 3 a i. A, paragraph 3 a. i. B or paragraph 3 a. i. C of the DRS Policy.

Paragraph 3 a. ii. "Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant."

The Complainant says that if someone tries to access www.g4s.co.uk, thinking it is the Complainant's UK website, they are met with a blank screen and this is resulting in the loss of potential clients and custom from the United Kingdom, who mistakenly believe that G4S do not have a UK website. In fact, as per exhibit 11 submitted by the Complainant, you are met with an "Error 404 - Not Found" page. I have no doubt that, in view of the Complainant's use of and reputation in the G4S name, some people may now try to access www.g4s.co.uk in the mistaken belief or assumption that they will find the Complainant's UK website. However, the Respondent cannot be blamed for that if all of the Complainant's Rights in the G4S name resulting from its substantial use of, and reputation in, the G4S name have been generated and acquired after the Respondent had himself acquired the Domain Name.

It seems to me that, in fact, the Respondent is not using the Domain Name at all to resolve to any website, even to a holding page website. Paragraph 3 b of the DRS Policy states that  "Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration".

He does appear to have used the Domain Name for an email on at least one occasion, when he emailed the Complainant on 17 June 2005 using the email address "harry@g4s.co.uk". The Complainant says that the Respondent, after this initial contact, became elusive and the Complainant was not able to discuss the sale of the Domain Name any further. However, the Complainant has given no further details of its attempts to contact the Respondent and how it says he became elusive.

It seems that the only use of the Domain Name by the Respondent that the Complainant can point to is one email that was sent to the Complainant offering the Domain Name for sale. In the circumstances, I am not persuaded, on the balance of probabilities and on the evidence before me, that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

Paragraph 3 a iii "The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern."

The Complainant says that the Respondent is an individual, not a company, or agent working on behalf of a company or organisation. The Complainant has conducted a search of Nominet's Public Register Search Service (PRSS) database, which is a contract service that allows you to search the register for .uk domain names that are registered to a particular legal entity and/or of a similar name. The search against the Respondent's name, shown as Exhibit 13, revealed that, in addition to the Domain Name, he has registered twenty one other .co.uk domain names. The Complainant points to three of them, being ukdreamworks.co.uk, ukporche.co.uk, porcheuk.co.uk.

As the Complainant says, these domain names incorporate either a well known brand with the addition of a generic word (i.e. "uk"), or the misspelling of the brand with an generic term, which the Complainant refers to as "typo-squatting". The Complainant says that these three domain names do not resolve to active websites, and have been inactive since their registration. Copies of "screen shots" of the domain names are provided in support as Exhibit 14, which show the same "Error 404 - Not Found" message.

Whilst they were inactive when the Complainant tried to find a website to which these domain names resolved on 2 May 2007, I am not sure how the Complainant claims to be able to know that they have been inactive since their registration dates of 12 June 2002 (in respect of ukdreamworks.co.uk) and 30 January 2004 (in respect of ukporche.co.uk and porcheuk.co.uk).

The Complainant says that these registrations further support the case that the registration of the Domain Name was abusive and part of a series of registrations demonstrating the Respondent's habitual registration of domain names in which the Respondent has no apparent interest. The Complainant says that the Respondent has no direct affiliation with either Porsche or DreamWorks, and has been authorised to use neither brand in the registration of these domain names.

The Complainant produces no evidence to support those statements, nor any explanation as to how the Complainant would be likely to know about the existence or the details of any agreements between the Respondent and the proprietors of the Porsche or DreamWorks trade marks. However, even assuming it to be the case that the Respondent has no apparent connection or authority from the proprietors of the Porsche or DreamWorks trade marks, I do not believe that this gets the Complainant home. Paragraph 3 a iii of the DRS Policy refers to demonstrating that the respondent has engaged in "a pattern" of such registrations. The Complainant points to 3 out of the 21 domain names registered by the Respondent. The other 18 include generic domain names such as publishingdirect.co.uk and highspeedtravel.co.uk. Even assuming that 3 out of 21 domain name registrations is sufficient to be "a pattern" of apparent abusive registrations, Paragraph 3 a iii of the DRS Policy still requires the Complainant to demonstrate that the Respondent's registration of the Domain Name is part of that pattern.

In my view there is a very big distinction between the Respondent's registration of the Domain Name on 2 February 2004 and his registration of ukdreamworks.co.uk on 12 June 2002 and ukporche.co.uk and porcheuk.co.uk on 30 January 2004. The Domain Name was apparently registered before the Complainant had any Rights in the G4S name, whereas the other three domain names were registered years after the DreamWorks and Porsche names had become world famous.

In the circumstances I am not satisfied that the Respondent's registration of the Domain Name is part of the same pattern that might be demonstrated by his registrations of ukdreamworks.co.uk, ukporche.co.uk and porcheuk.co.uk.

10. Decision:

For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name G4S, being a name or mark which is identical or similar to the Domain Name, but that the Complainant has not proved, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

In the circumstances I order that no action be taken in respect of the Respondent's registration of the Domain Name.

Chris Tulley

2 July 2007