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 On behalf of owner, Whois Privacy Service of Seattle, Washington, United States / IT Support, Helpdesk Verification of Ottawa, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Amazon Registrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 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 June 13, 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 June 20, 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 June 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on July 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 publicly traded company (NYSE: JLL), established in 1999 that provides professional services including facility management and investment management specializing in real estate. Since 2014 the Complainant has officially marketed itself under the name JLL and is the owner of the following trademark registrations:
- United States registered trademark JLL registration number 4564654, registered on July 8, 2014 for services in international class 35;
- United States registered trademark JLL registration number 4709457, registered on March 24, 2015 for services in international class 036;
- Canada registered trademark JLL, registration number TMA875711, registered on April 15, 2014 for services in classes 35, 36, 37 and 42;
- European Union trade mark JLL, registration number EUTM 010603447, registered on August 31, 2012 for services in classes 36, 37 and 42.
The Complainant is the owner of a large portfolio of domain names that incorporate the JLL service mark and maintains over 100 websites globally. It is the owner of the domain name which was registered on November 20, 1998. In 2015, the Complainant acquired the rights to use the generic TopLevel Domain (“gTLD”) extensions “.jll” and “.lasalle”.
In the absence of any communication from the Respondent, the only available information about the Respondent and the disputed domain name is that provided in the Complaint and the registration details disclosed on the WhoIs and the identification information provided by the Registrar following enquiry by the Center.
The Respondent had availed of a privacy service but has been identified as the owner of the disputed domain name which was registered on April 11, 2018 and resolves to a blank web page. 5. Parties’ Contentions A. Complainant
The Complainant relies on its rights in the above-listed trademark registrations and its rights at common law in the use of the JLL service mark in the provision of property and corporate facility management services in over 80 countries from more than 300 corporate office locations worldwide.
The Complainant asserts that it manages a real estate portfolio of 4.6 billion square feet worldwide and has a workforce of over 82,000 employees. LaSalle Investment Management, the Complainant’s investment management business, is one of the world’s largest and most diverse enterprises in real estate with USD 58.1 billion of assets under management and which in 2017 reported annual fee revenues of USD 6.7 billion with gross revenues of USD 7.9 billion.
The Complainant asserts that it has acquired a global goodwill in the use of the JLL service mark through business, Internet presence through its websites and marketing including the use of social media on Facebook, Twitter and Google+ pages. According to S, the Complainant’s websites at its primary domain names and have received 740,530 and 98,980 visitors in the past 6 months respectively. Additionally, Alexa gives a global rank of 40,144 and a rank of 14,098 in the United States while has a global rank of 186,855 and a rank of 105,174 in the United States. The Complainant’s Twitter page has over 69,500 followers while its Facebook page has over 104,000 “likes”, evidence of which has been adduced in screenshots annexed to the Complaint. The Complainant has also provided evidence of numerous awards received by the Complainant as reported in the media in the years 2015, 2016 and 2017.
The Complainant submits that the disputed domain name is identical or confusingly similar to its JLL service mark as it incorporates the JLL trademark in its entirety while merely adding the generic, descriptive term “real estate”, which is a reference to the Complainant’s real estate management business in combination with a hyphen and the gTLD “.com” extension.
The Complainant submits that numerous panels established under the Policy have decided that the mere addition of descriptive terms that reference the business of a complainant to a complainant’s trademark creates a confusing similarity between the domain name and the mark and in this regard the Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). The Complainant submits that in the present case the direct reference to its business serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant adds that the hyphen in the disputed domain name should be disregarded for purposes of making this determination arguing that the relevant comparison to be made is between only the second-level portion of the disputed domain name and the Complainant’s JLL service mark. In this regard the Complainant cites the decision in Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (finding that the Top-Level Domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name as the above-listed trademark registrations establish the Complainant’s exclusive right to use the JLL trademark in commerce on or in connection with the specified services.
The Complainant argues that the Respondent is not sponsored or affiliated with the Complainant and has not been given any rights to use the Complainant’s mark. The information disclosed by the Registrar following enquiry by the Center, identifies the Respondent as “IT Support, Helpdesk Verification” and this establishes that the Respondent is not commonly known by the disputed domain name. The Complainant furthermore argues that at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which past UDRP panels have also found to equate to a lack of legitimate interest. The Complainant refers in this regard to the decision in Jackson National Life Insurance Company v. Private WhoIs N4892,WIPO Case No. D2011-1855 (“The Panel concludes that the Respondent possesses no entitlement to use the name or the words in the Complainant’s marks and infers […] from the ‘Private Whois’ registration that it is not known by such name. There is no evidence of the Respondent ever being commonly known by the name or words now included in the disputed domain name”). Additionally the disputed domain name was registered on April 11, 2018, which is significantly later than the Complainant’s registration of the domain name on November 20, 1998.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. By registering the disputed domain name that incorporates the Complainant’s JLL in its entirety in combination with a term that describes the Complainant’s field of business activity, the registrant of the disputed domain name demonstrated prior knowledge of the Complainant and its rights in the JLL mark. In light of the facts set out above, the Complainant submits that it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered.
Stated differently, JLL is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith. The disputed domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.” Citing Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. Further, because the disputed domain name is a combination of the Complainant’s JLL trademark in its entirety and the closely associated term “real estate”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” Citing Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The disputed domain name resolves to an inactive site. Past panels established under the Policy have held that passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to the Policy, paragraph 4(a)(iii). See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“it is possible, in certain circumstances, for inactivity by the Respondents to amount to the domain name being used in bad faith”).
The Complainant argues that as there is no plausible good-faith reason or logic for the Respondent to register the disputed domain name which refers to the Complainant’s business, it follows that the disputed domain name was registered in bad faith to cause confusion among Internet users as to the source of the disputed domain name. Considering these circumstances, any use of the disputed domain name whatsoever, whether actual or theoretical must be in bad faith.
Additionally at the time of the initial filing of the Complaint, the Respondent had employed a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use. Citing the decision in Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni,WIPO Case No. D2003-0230.
The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding and past panels have held that failure to respond to a cease and desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”); also RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided convincing evidence of its rights in the JLL service mark acquired through its ownership of the above-listed registered service marks and at common law through the extensive use of the mark in its real estate business in numerous jurisdictions and on the Internet.
Having compared both, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s JLL service mark. The disputed domain name consists of the Complainant’s JLL mark in its entirety, the descriptive terms “real estate”, a hyphen and the gTLD “.com” extension.
The Complainant’s JLL trademark is the dominant and only distinctive element of the disputed domain name. The words “real estate” do not serve to avoid a finding of confusing similarity and both the hyphen and the gTLD “.com” extension may be ignored for the purposes of comparison in this case.
In the circumstances, the Complainant has therefore established the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant, which has exclusive rights to use the JLL mark in relation to the provision of real estate services in the jurisdiction where the Respondent purports to be established (namely Canada) has not given any right or license to the Respondent to use its service mark or to incorporate it as an element of a domain name; the Respondent’s name as disclosed by the Registrar does not resemble the disputed domain name in any way; and the Respondent is passively holding the disputed domain name which resolves to an inactive site and is not putting it to any apparent commercial or noncommercial active use as the address of a website.
In such circumstances, it is well established that the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. The Respondent has not filed any Response or communicated in any way in response to the Complaint. The Respondent has therefore failed to discharge the burden of production and the Complainant has succeeded in establishing the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
This Panel accepts the unchallenged submissions of the Complainant that the registrant of the disputed domain name must have been aware of the Complainant and its rights in the JLL mark when the disputed domain name was registered. This Panel finds that given the similarity of the disputed domain name and the Complainant’s mark, the fact that the disputed domain name contains elements that directly reference the Complainant’s real estate business and the established reputation of the Complainant’s JLL mark, on the balance of probabilities the disputed domain name was registered in bad faith to take predatory advantage of the Complainant’s mark, goodwill and reputation by giving the false impression to Internet users that there is a connection between the disputed domain name and the Complainant’s business.
Additionally, this Panel finds that the disputed domain name is being used in bad faith, because the disputed domain name was on the balance of probabilities registered in bad faith by the Respondent which has no rights or legitimate interests in the disputed domain name for the purposes of taking predatory advantage of the Complainant’s rights in the JLL service mark. In making this finding this Panel has also considered the strength of the Complainant’s mark, the inactive status of the disputed domain name, which does not resolve to any active website, and the fact that the Respondent has taken active steps to conceal its identity and concludes that taken together the Respondent’s actions amount to “passive holding” in bad faith as identified by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, supra, and subsequent UDRP panels.
While the use of a privacy service is not in itself objectionable, in the present case the Respondent’s use of a privacy service gives weight to the Complainant’s submissions that the disputed domain name was registered and is being used in bad faith. 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.
James Bridgeman
Sole Panelist
Date: July 28, 2018
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