The Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Stephanie Strome of Ottawa, Canada 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed against with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2017, 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 the Complainant on December 15, 2017, 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 December 20, 2017.
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 December 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on January 23, 2018. 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 professional services and investment management firm specializing in real estate based in the United States. The Complainant was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999 and has been marketing itself since 2014 under the name “JLL”. The Complainant serves clients in over 80 countries, including Canada.
The Complainant owns trademark registrations in the United States, in Canada and across various jurisdictions for the name “JLL”, notably:
- United States Trademark Registration No 4564654, registered on July 8 2014, in international classes 35, 36, 37 and 42;
- United States Trademark Registration No 4709457, registered on March 24, 2015, in international classes 36, 37 and 42;
- Canada Trademark Registration No TMA875711, registered on April 15, 2014, in international classes 35, 36, 37 and 42;.
The Complainant has a large Internet presence and is the owner of numerous domain names incorporating Complainant’s trademarks, including and . Furthermore, the Complainant acquired the rights to use the Top-Level Domain “.jll”. In addition, the Complainant has a strong social media presence through the use of its Facebook, Twitter and Google+ pages.
The domain name in dispute was registered on October 27, 2017. The disputed domain name resolves to an inactive website. However, as evidenced by the Complainant, at least two emails were sent from “[…]@”, signed with the name of one of the Complainant’s employees and including in its signature “Jones Lang LaSalle”, offering job positions in return for payment, notably:
“Dear [xxxxx],
I received the signed copy of the appointment letter for the registration of your training, also include a scanned copy of any form of identification, preferably a driver’s license.
I issued an invoice for the amount of $8,551.85 to the account department for the total expenses needed for your training, it will cover for your flight ticket, two weeks of hotel accommodation, airport transportation, feeding and other equipment needed.
The cheque received, deposit it today and send a scanned copy of the deposit slip to me for records.
(….)
[Complainant employee]
Training and Development Manager
[Telephone number]
Jones Lang LaSalle
275 Slater Street
Ottawa, Ontario
K1P 5H9”. 5. Parties’ Contentions A. Complainant
The Complainant alleges to have been the owner of several trademark registrations comprising “jll” since 2014, notably in the United States, in Canada and in the European Union which are used in relation to services in the field of real estate as well as on the internet, social media, etc. When registering the disputed domain name, the Respondent added the descriptive term “global” to Complainant’s JLL trademark thereby making the disputed domain name confusingly similar to the Complainant’s trademark, particularly since the term “global” closely relates to the Complainant’s business.
The Complainant is of the opinion that it has exclusive rights over the trademark JLL and that the Respondent:
(i) is not sponsored or affiliated with the Complainant;
(ii) is not authorized by the Complainant to use the trademark JLL;
(iii) is not commonly known by the disputed domain name;
(iv) attempted to phish personal information from visitors by sending emails from the disputed domain name by creating the impression that such emails were originating from the Complainant;
(v) attempted to pass itself as the Complainant by sending such emails;
(vi) registered the disputed domain name significantly after the Complainant filed for registration of its JLL trademarks.
For these reasons, the Complainant estimates that the Complainant has no rights or legitimate interests in respect of the disputed domain name.
Finally, the Complainant states that its JLL trademark is known internationally with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark well before the Respondent’s registration of the disputed domain name. By registering a domain name associating the JLL trademark and the term “global” which is closely associated to the Complainant, the Respondent has demonstrated a knowledge and familiarity with Complainant’s brand and business. The Respondent sent emails from the disputed domain name to attempt employment fraud by impersonating as an employee from Complainant’s Canada office and offering fake job positions in return for payment. Furthermore, the disputed domain name resolves to an inactive site which constitutes passive holding. Finally, the Complainant underlines that the Respondent used a privacy service to hide its identity. In conclusion, the Complainant estimates that on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s mark. Under these circumstances, the Complainant thus concludes that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements to obtain the transfer of a domain name:
(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 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
The first element requires that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights. See the Policy, paragraph 4(a)(i).
The Complainant has shown to have registered trademark rights for JLL in several countries including Canada, where the Respondent is based.
The disputed domain name contains the Complainant’s trademark in its entirety. The sole addition of the generic Top-Level Domain (“gTLD”) “.com” and of the descriptive term “global” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The second element requires that the respondent has no rights or legitimate interests in respect of the disputed domain name. See the Policy, paragraph 4(a)(ii). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights to or legitimate interests in the disputed domain name.
In particular, the Complainant has developed a series of arguments in order to demonstrate the lack of rights and legitimate interests of the Respondent in the disputed domain name and has established that it has never authorized the Respondent to register and/or use the trademark JLL in the disputed domain name.
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
No evidence is contained in the case file which would evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found; shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the 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 he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
The mere fact that the disputed domain name was used by the Respondent in order to send fraudulent emails impersonating an employee from Complainant’s Canada office and offering fake job positions in return for payment is sufficient to conclude that the domain name was registered and is used in bad faith.
Furthermore, as underlined by the Complainant, the Respondent has chosen to use a privacy service when registering the disputed domain name. While such a conduct is not a bad faith behavior as such, it is with no doubt a further factor which shows the bad faith intent of the Respondent when it chose the disputed domain name.
Finally, the silence of the Respondent within these proceedings is also suggestive of bad faith.
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) 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 names, be transferred to the Complainant.
Theda König Horowicz
Sole Panelist
Date: February 6, 2018
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