The Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Margaret Sessions, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 2021 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 November 19, 2021.
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 November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2021.
The Center appointed Ellen B Shankman as the sole panelist in this matter on December 27, 2021. 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 BackgroundThe date of the Domain Name registration is May 6, 2021.
The Complainant claims that it has spent a considerable amount of time and money protecting its intellectual property rights. The Complainant claims first use in commerce of its trademark at least as early as 1999 and provided evidence of multiple trademark registrations for the JONES LANG LASALLE mark, including, inter alia: United States Registration No. 2616175 registered on September 10, 2002 in classes 36, and 37 and European Union Trade Mark (“EUTM”) Registration No. 001126291 registered on June 13, 2000 in classes 36, 37, and 42.
The Complainant has also registered domain names containing the trademark JONES LANG LASALLE prior to the registration of the Domain Name, including, inter alia:
The Complainant also provided evidence of Cease & Desist letters (“C&D letters”) it sent the Respondent, to which the Complainant claims it received no response.
The Domain Name resolves to an inactive page.
5. Parties’ Contentions A. ComplainantThe Complainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated. Jones Lang LaSalle Incorporated and all of its consolidated subsidiaries comprises the JLL group. Headquartered in Chicago, Illinois, United States, the JLL group is a professional services and investment management firm specializing in real estate. Its regional headquarters for the Americas, EMEA and Asia Pacific businesses are located in Chicago, London, and Singapore, respectively. The JLL group was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999 in what was the largest international merger in the real estate industry at the time.
The JLL group is an industry leader in property and corporate facility management services, with a portfolio of 5 billion square feet worldwide. With a workforce of approximately 91,000 the JLL group serves clients in over 80 countries from more than 300 corporate office locations worldwide. LaSalle Investment Management, the Complainant’s investment management business, is one of the world’s largest and most diverse in real estate with annual revenue of USD 16.6 billion. In 2020, the JLL group reported a revenue of USD 6.1 billion. Moreover, the JLL Group is the winner of numerous awards and accolades. In 2015, the Complainant achieved Fortune 500status and is recognized by Fortune Magazineas one of the “World’s Most Admired Companies” in 2021 for the sixth consecutive year.
In summary, the JLL and JONES LANG LASALLE brands are well recognized and respected worldwide and in its industry. The JLL group, which includes the Complainant, has made significant investment to advertise and promote the JLL and JONES LANG LASALLE trademarks worldwide in media and the Internet over the years.
The Complainant contends that the Domain Name is a purposeful misspelling of the Complainant’s JONES LANG LASALLE trademark and must be considered confusingly similar to the Complainant’s trademark. More specifically, the Domain Name varies from the Complainant’s trademark by only one letter – the Respondent has simply removed the letter “l” from the term “lasalle” – which is bad faith typosquatting.
Further, 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 Domain Name, which evinces a lack of rights or legitimate interests. The Respondent is using the Domain Name to redirect internet users to a website that resolves to a blank page and lacks content. The Respondent has failed to make use of this Domain Name’s website and has not demonstrated any attempt to make legitimate use of the Domain Name and website, which evinces a lack of rights or legitimate interests in the Domain Name, the Respondent registered the Domain Name on May 6, 2021, which is significantly after the Complainant’s registration of its
By registering the Domain Name that differs to the Complainant’s trademark by one letter, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its
In this case, the Domain Name is confusingly similar to the Complainant’s trademarks, and the Respondent has made no use of the Domain Name, factors which should be duly considered in assessing bad faith registration and use. More specifically, where the Domain Name only removes one letter from the Complainant’s trademark, there is no plausible good-faith reason or logic for the Respondent to have registered the Domain Name. Rather, it is indicative of an intention to hold the Domain Name for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant.
The complaint claims that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding, and argues 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. To summarize the Complaint, the Complainant is the owner of registrations for the trademark JONES LANG LASALLE, in respect of financial and real estate services. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that incorporates the trademark in its entirety with the deletion of the letter “l” and the addition of the “.com” generic Top-Level Domain (“gTLD”), the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, and shows that the Respondent was familiar with the Complainant’s mark and goods and services. The slight changes do not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent 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 respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the supported facts regarding the use and reputation of the Complainant’s mark taken from the Complaint are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for JONES LANG LASALLE.
Further, the Panel finds that the Domain Name integrates the Complainant’s mark and that the Domain Name is confusingly similar to the Complainant’s trademark. The Panel finds that the removal of the letter “l” from the term “lasalle” in the Domain Name does not change the overall impression that the trademark of the Complainant is recognizable, and it does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
The Panel agrees with the Complainant’s contention that the Domain Name is a prototypical example of typosquatting -- which intentionally takes advantage of Internet users that inadvertently type an incorrect address – often a misspelling of the complainant’s trademark – when seeking to access the trademark owner’s website. This means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design. This is consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, whichstates that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not commonly known by the Domain Name, does not have permission to use the Complainant’s mark, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. The Panel is persuaded that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand. In light of and on balance of the facts set forth within this Complaint, the Panel finds that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademark.
WIPO Overview 3.0, section 3.1.4 states “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
The Panel’s view is that, when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant.
The Panel also finds that even though the Domain Name currently resolves to an inactive page, this does not preclude a finding of registration and use in bad faith where: “[…] it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (See Telstra Corporation Limited v. Nuclear Marshmallows, supra). This is also consistent with section 3.3 of the WIPO Overview 3.0, which states:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists 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.”
In addition, the Panel is persuaded that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Failure to respond to a C&D letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica 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”). See 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”).
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the absence of the use of the Domain Name for a legitimate purpose, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Ellen B. Shankman
Sole Panelist
Date: January 5, 2022