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 Domain Administrator, See PrivacyG of Phoenix, Arizona, United States / Sharon Jensen of Concordia, Saggitaria, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2018, 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 April 20, 2018 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 April 24, 2018.
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 April 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2018.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 28, 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. The Complainant was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999. Since 2014, the Complainant has officially marketed itself under the name “JLL”.
Complainant is the owner of numerous trademark registrations for the term JLL in many jurisdictions throughout the world, including
TRADEMARK
JURISDICTION
REGISTRATION NUMBER
REGISTRATION DATE
IC CLASS
JLL
United States
4564654
July 8, 2014
035
JLL
United States
4709457
March 24, 2015
036
JLL
Canada
TMA875711
April 15, 2014
035, 036, 037 042
JLL
European Union
010603447
August 8, 2012
036, 037, 042
The disputed domain name was registered on November 13, 2017 and does not resolve to any active website.
On December 6, 2017, and December 19, 2017, the Complainant’s lawyers sent cease-and-desist letters to the Respondent asserting Complainant’s trademark rights and requesting the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s cease-and-desist letters. 5. Parties’ Contentions A. Complainant
The Complainant describes itself as an industry leader in property and corporate facility management services, with business activities in over 80 countries with more than 280 corporate office locations worldwide.
The Complainant has provided evidence that support its contention that
- it is a publicly traded company (NYSE: JLL) which, in 2016, reported annual fee revenues of USD 5.8 billion with gross revenues of USD 6.8 billion;
- it achieved Fortune 500 status in 2015;
- it is recognized by Fortune Magazine as one of the “World’s Most Admired Companies” in 2017;
- it has a large Internet presence and is the owner of numerous domain names which incorporate the Complainant’s marks;
- it maintains 100 websites globally and in 2015 acquired the rights to use the “.jll” and “.lasalle” Top-Level Domain names;
- in addition to its numerous domain names and websites, the Complainant has a strong social media presence through the use of its Facebook, Twitter and Google+ pages.
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as the disputed domain name incorporates the Complainant’s JLL trademark in its entirety and only differs from the Complainant’s trademark by the addition of the descriptive term “amazon”.
The Complainant further argues that it is generally accepted that the suffix, such as “.com”, is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent is not sponsored by or affiliated with the Complainant in any way;
- the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names;
- the Respondent is not commonly known by the disputed domain name, and cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(c)(ii);
- it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark;
- in the absence of any license or permission from the Complainant to use its trademark, the Respondent cannot reasonably claim any actual or contemplated bona fide or legitimate use of the disputed domain name.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- its JLL trademark is known internationally, with trademark registrations across numerous countries;
- it has marketed and sold its goods and services using this trademark since March 4, 2014, which is well before the Respondent’s registration of the disputed domain name on November 13, 2017;
- at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of a domain name containing well-known trademarks constitutes bad faith per se;
- the Respondent should be considered as possessing actual notice and knowledge of the Complainant’s marks;
- the word bad faith “use” in the context of paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent but notes that passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy, paragraph 4(a)(iii);
- the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv), with no good faith use possible;
- where the disputed domain name incorporates Complainant’s JLL trademark in its entirety while merely adding the generic term “amazon” to such trademark, there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name, and the only feasible explanation for the Respondent’s registration of the disputed domain name is that the Respondent intends to cause confusion, mistake and deception by means of the disputed domain name;
- any use of the disputed domain name for an actual website could only be in bad faith;
- the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which can support an inference of bad faith registration and use;
- the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name only differs from the Complainant’s trademark JLL by the addition of the term “amazon” which according to the Panel’s view, the public likely perceives as an indication of source referring to the American electronic commerce and cloud computing company Amazon and, contrary to the Complainant’s contention, not as a merely descriptive term.
UDRP panels have generally held that where a domain contains more than one mark, the domain name may be considered confusingly similar to all of the marks individually. This is the case regardless of whether the complainant is the owner of all of the marks or merely one of the terms contained in the domain name. See for example, Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142 (the respondent’s domain name was confusingly similar to the complainant’s mark CHEVRON); The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones,WIPO Case No. D2000-0731 (the disputed domain name was confusingly similar to the co-complainant’s marks CHASE and FLEMMING); Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 (the disputed domain name was confusingly similar to the complainant’s PFIZER mark; the addition of the third-party mark does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark).
Finally, it has been long established under UDRP decisions that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” and “.org” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark JLL in which Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 Complainant has asserted that it never licensed or permitted the Respondent to use the Complainant’s JLL trademark, the Respondent has no trademark rights that correspond to the disputed domain name and the Respondent has not been commonly known by the disputed domain name.
Furthermore, the Complainant has provided evidence that the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content and therefore has not demonstrated any attempt to make legitimate noncommercial or fair use.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has also satisfied the second element set forth by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the 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, 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 the Respondent’s website or location.
Based on the record in this proceeding, the Panel is satisfied that the Complainant’s JLL mark is highly distinctive and famous throughout the world.
Given the Complainant’s renown and goodwill worldwide it is inconceivable that the Respondent did not have knowledge of the Complainant’s JLL trademark at the time of registration of the disputed domain name in 2017.
As the disputed domain name reproduces the Complainant’s trademark in its entirety with the mere addition of a third party’s famous trademark AMAZON, the Panel concludes that on the balance of probabilities the Respondent has registered the disputed domain name with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation.
The Panel therefore concludes the Respondent registered the disputed domain name in bad faith.
The fact that there is no evidence that the disputed domain name has been actively used does not prevent a finding of bad faith use.
Although the circumstances listed in paragraph 4(b) of the Policy are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a domain name, in certain circumstances, can constitute bad faith use under the Policy. (See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.)
While UDRP panels 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 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. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)
The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.
Based on the record in this proceeding, the Panel is satisfied that the Complainant’s JLL mark is highly distinctive and famous throughout the world.
Given the Complainant’s renown and goodwill worldwide, it is inconceivable that the Respondent did not have knowledge of the Complainant’s JLL trademark at the time of registration of the disputed domain name in 2017.
Given that the Complainant’s JLL mark is solely connected with the Complainant and does not have any descriptive meaning, the disputed domain name is also not susceptible to be used in a good faith descriptive sense.
This is particularly true as the disputed domain name also consists of another famous trademark, AMAZON, whose use as part of the disputed domain name would also likely amount to a bad faith use pursuant to the Policy, insofar as Amazon’s trademark rights are concerned.
One difference between this case and the Telstra decision is that, unlike as in Telstra, the Respondent has supplied registration information, which does not prima facie appear to be false. However, the Telstra holding does not turn on the use of false contact information; rather, the central holding of that case is that passive holding of a domain name which incorporates a well-known mark can itself suffice to establish bad faith registration and use. See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, supra (“The provision of false contact information or operation under a false identity is not a prerequisite for a finding of bad faith registration and use based on respondent inaction”). D. Transfer of Domain Name containing a Third Party’s Trademark
This Panel follows the view that there is no basis in principle or in practice for denying a complainant the remedy of transfer merely because the disputed domain name contains, in addition to the complainant’s trademark, a trademark owned by a third party.
The Panel notes that, where a single complainant has filed a complaint containing a domain name which is composed of a mark owned by the complainant and the mark of a third party, but without the express consent of the third-party mark holder, UDRP panels have in some cases transferred the domain name‚ without prejudice to the rights of others, while other UDRP panels have elected to cancel the disputed domain names (see WhatsApp Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674 (providing thorough discussion on this point, noting that all transfer orders under the Policy are‚ without prejudice to the rights of third parties); see also F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751 (“The Panel notes that this results in the transfer to the Complainant of a domain name that includes the trademark VIAGRA, which the Panel understands is owned by Pfizer Inc that is not a party to the current proceeding”)). There are a number of decisions where transfers have been refused because the consent of the other trademark holder has not been evidenced. See for example, Dr. Ing. H.c. F. Porsche AG v. Automotive Parts Solutions,WIPO Case No. D2003-0725 (“Here, Apple, Inc is not a party and there is no evidence before the Panel that Apple, Inc would consent to the remedy of transfer the Disputed Domain Name to the Complainant”); see also Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896 (ordering cancellation of one domain name which contained the complainant’s mark and an additional third-party trademark (HOTMAIL), while permitting transfer of the remaining domain names containing only the complainant’s mark); and Educational Testing Service v. The IELTS TOEFL Centre,WIPO Case No. D2010-1755.
The Panel follows the view that neither the Policy nor the Rules contain a provision that precludes the grant of the transfer remedy in this situation. As neither the Policy nor the Rules contain a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy, there is no need for concern that an order of transfer of a domain name will immunize the complainant from further action in relation to that domain name (see WhatsApp Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674).
For the above reasons, this Panel sees no reason not to make the requested order of transfer of the disputed domain name to the Complainant. 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 be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: June 12, 2018
Full & Egal Universal Law Academy