The Complainant is Jones Lang LaSalle IP, Inc., of Chicago, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Blanche McWilliams of Lees Summit, Missouri, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2018. On June 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 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 26, 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 July 3, 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 July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2018.
The Center appointed Seth M. Reiss as the sole panelist in this matter on August 3, 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, founded by the merger of Jones Lang Wootton and LaSalle Partners in 1999. Since 2014, the Complainant has officially marketed itself under the name “JLL.”
The Complainant claims 82,000 employees serving clients in over 80 countries with more than 300 corporate offices worldwide. Complainant is publicly traded and in 2015 achieved Fortune 500 status.
The Complaint's JLL mark has been registered with the with the European Trademark Office since August 2012, the Canadian Intellectual Property Office since April 2014, and the United States Patent and Trademark Office since July 2014.
The Complainant has a significant Internet and social media presence, with over 100 website globally, being among its primary domain names.
According to available WhoIs records, the disputed domain name was first registered on June 5, 2018, as a Domains by Proxy, LLC private registration. On that same day the disputed domain was used to generate fraudulent emails, sent to the Complainant’s executives purporting to be from the Complainant's CEO. One of the fraudulent emails appears to be soliciting sensitive financial information.
In response to the Center’s verification request, the Registrar GoD identified the registrant of the disputed domain name as Blanche McWilliams of Lees Summit, Missouri, United States.
The disputed domain name failed to resolve into a website at the time the Complaint was filed and at the time the Panel prepared its decision. The only documented use of the disputed domain name is the two fraudulent emails sent on the same day the disputed domain name was registered. 5. Parties’ Contentions A. Complainant
The Complainant contends that the domain name at issue is identical or confusingly similar to the Complainant’s registered JLL mark, that there is no evidence of the Respondent having any rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests that this Panel order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. The Complainant’s JLL mark has been nationally registered since 2012, predating the registration of the disputed domain name by many years.
The disputed domain name is comprised of the Complainant's registered “JLL” mark followed by the suffice “intl” wherein the “JLL” and “intl” are separated one from the other by a hyphen. The use of the hyphen preserves the integrity of the JLL mark while the “intl” suffix will be understood to mean “international”, descriptive of the Complainant's character. As explained in the background section, the Complainant is very much an international company.
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7.
“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 nature of such additional term(s) may however bear on assessment of the second and third elements.” WIPO Overview 3.0, section 1.8.
Use of the “intl” suffix in the context of the disputed domain name does not detract from the confusing similarity caused by incorporation of the JLL mark in its entirety into the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the JLL mark in which the Complainant has rights, and that the first element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview 3.0, section 1.2.
The Complainant has alleged that it has not licensed or otherwise given the Respondent permission to use the Complainant’s JLL mark in the dispute domain name. The record is devoid of any evidence that the Respondent may be known by the disputed domain name or otherwise have some right or legitimate interest in respect of the disputed domain name. By not submitting a response, the Respondent has failed to invoke some circumstance that might otherwise demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some rights or legitimate interests in the disputed domain name. Ahead Software AG v. Leduc Jean,WIPO Case No. D2004-0323.
The Panel concludes that the Respondent has failed to establish some rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name was first registered on June 5, 2018. Also on June 5, 2018, two emails were sent using the disputed domain name, purporting to be from the Complainant's CEO. The two emails, copies of which are appended to the Complaint, were directed to the Complainant's executives one requesting sensitive, financial information. The emails were not from the Complainant's CEO and were not authorized by the Complainant.
That the disputed domain name was used to send emails to the Complainant's executives the same day the disputed domain name was registered demonstrates that whomever registered the disputed domain name was well aware of the Complainant and its JLL mark when the domain name was registered. This establishes bad faith registration.
The Complainant characterizes the fraudulent emails as a phishing scheme having some nefarious purpose such as to financially defraud the recipients. An examination of the contents of these emails, when considered in relation to the registration of the disputed domain name, leads this Panel to conclude that the Respondent registered the disputed domain name to use it for an illegitimate purpose and was attempting to use it thus.
Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.
WIPO Overview 3.0, section 3.4.
The circumstances of the fraudulent emails in relation to the registration of the disputed domain name is sufficient for this Panel to reach a finding that Responded registered and is using the disputed domain name in bad faith, establishing the third and final element of paragraph 4(a) 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 name be transferred to the Complainant.
Seth M. Reiss
Sole Panelist
Date: August 15, 2018
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