Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Lourder Louis, JLL Property Management LLC, 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 December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2021, 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 Complainant on December 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 31, 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 Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 25, 2022.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on February 10, 2022. 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 BackgroundComplainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated. Jones Lang LaSalle Incorporated and all of its consolidated subsidiaries comprises the JLL group, which is a professional services and investment management firm specializing in real estate.
Complainant owns several United States, Canadian, and European Union trademarks for JLL and JONES LANG LASALLE, with registration dates as early as August 31, 2012. The stock of Complainant’s parent company trades on the New York Stock Exchange under the symbol JLL.
The disputed domain name was registered on December 31, 2020. The disputed domain name leads to a website that appears to contain pay-per-click links.
5. Parties’ Contentions A. ComplainantComplainant asserts that its organization is a professional services and investment management firm specializing in real estate. Complainant asserts that its organization “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 people serving clients in over 80 countries from more than 300 corporate office locations worldwide. Complainant asserts that its investment management business “is one of the world’s largest and most diverse in real estate with … annual revenue of $16.6 billion.” Complainant asserts that its group has a large internet presence, maintains 100 websites globally, has acquired the rights to use the “.jll” and “.lasalle” generic Top-Level Domains (“gTLD”), and that Complainant’s websites at “www.jll.com” and “www.joneslanglasalle.com” received 1.19 million and 86,910 visitors from February 2021 to July 2021, respectively. Complainant also asserts that its Twitter page has over 75,100 followers, its Facebook page has over 131,000 “likes”, and its LinkedIn page has over 729,000 followers.
Complainant asserts that the disputed domain name consists of Complainant’s JLL trademark followed by the generic terms “property” and “management” – terms that allegedly are closely linked and associated with Complainant’s brand and trademark. Complainant therefore asserts that the disputed domain name is confusingly similar to Complainant’s JLL trademark. Complainant further asserts that Respondent is not sponsored by or affiliated with Complainant, Complainant has not given Respondent permission to use Complainant’s JLL trademark, Respondent is not commonly known by the disputed domain name, Respondent used a privacy WhoIs service to conceal Respondent’s identity, Respondent is using the disputed domain name “to direct internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business”, Respondent receives pay-per-click fees from the disputed domain name, “[b]y the time Respondent registered the Disputed Domain Name, Complainant already had a worldwide reputation in its trademark … [t]herefore, it is evident that the Disputed Domain Name carries a high risk of implied affiliation with Complainant which cannot be considered a fair use of the Disputed Domain Name”, and that, as a result of the foregoing, Respondent has no rights or legitimate interests in the disputed domain name. Finally, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith, given Complainant’s allegations that Complainant’s trademarks were well-known internationally years before Respondent registered the disputed domain name, that Respondent knew or should have known of Complainant’s marks at the time Respondent registered the disputed domain name, that “performing searches across a number of internet search engines for “jllpropertymanagement” returns multiple links referencing Complainant and its business”, “that Respondent is using the Disputed Domain Name to confuse unsuspecting internet users looking for Complainant’s services, and to mislead internet users as to the source of the domain name and website”, that Respondent “has demonstrated a nefarious intent to capitalize on the fame and goodwill of Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent’s website”, that “there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Name”, that Respondent “employed a privacy service to hide its identity”, and that “Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding”.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, a Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.
Complainant’s trademark registrations demonstrate that Complainant has rights in the JLL mark. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“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.”).
The disputed domain name consists of the JLL mark, followed by “property” and “management”, with the “.com” gTLD at the end. Generally, “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.” WIPO Overview 3.0, section 1.8. Nor does the addition of the “.com” gTLD prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsComplainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, per paragraph 4(a)(ii) of the Policy.
“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 [Respondent’s] rights or legitimate interests to the [disputed] domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the [disputed] domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c).
Complainant asserts that Respondent is not sponsored by or affiliated with Complainant, Complainant has not given Respondent permission to use the JLL trademark, Respondent is not commonly known by the disputed domain name, Respondent is using the disputed domain name to direct internet users to a website with pay-per-click links that lead to competitive businesses, and Respondent was aware of Complainant’s JLL mark at the time Respondent registered the disputed domain name.1
These allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973 (“Respondent is using the Domain Name to profit commercially by attracting internet users and providing pay-per-click links ... . Respondent is not affiliated with Complainant and has not been authorized by Complainant to use and register its trade marks ... . The registration and use of Complainant’s Trade Mark preceded the registration of the Domain Name. The Domain Name makes an obvious and direct reference to Complainant’s Trade Mark and services ... . In the absence of any explanation from Respondent as to why and how Complainant’s Trade Mark found its way into the Domain Name and why Respondent might have a legitimate interest in the Domain Name, the Panel finds that Respondent’s conduct is not consistent with relevant rights or legitimate interests on Respondent’s part.”); LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010‑0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. […] Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); WIPO Overview 3.0, section 2.5.1 (“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”); WIPO Overview 3.0, section 2.9 (“panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”).
Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithComplainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of … Complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the [disputed] domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [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, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other online location, by creating a likelihood of confusion with [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.” WIPO Overview 3.0, section 3.1.
Complainant asserts that its trademarks were well-known internationally years before Respondent registered the disputed domain name, that Respondent knew or should have known of Complainant’s marks at the time Respondent registered the disputed domain name, “that Respondent is using the Disputed Domain Name to confuse unsuspecting internet users looking for Complainant’s services, and to mislead internet users as to the source of the domain name and website”, that Respondent is using the disputed domain name to direct users to pay-per-click links that lead to websites of competitors, and that “Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding”. Considering the construction of the disputed domain name, namely the incorporation of the terms “property” and “management” along with Complainant’s trademark, it is evident that Respondent was aware of and purposefully targeted Complainant in its registration of the disputed domain name.
The registration and use of a domain name that is known to be confusingly similar to another party’s trademark for a pay‑per-click website, wherein the links capitalize on the reputation associated with said party’s trademark, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. Caliber Home Loans, Inc. v. Domains By Proxy, LLC / Patrick Scott,WIPO Case No. D2018-0524 (“What is clear is that the Respondent (a) was well aware of the Complainant’s mark, which the Respondent emulated in the email as well as in the Domain Name itself, and (b) traded on the Complainant’s reputation to attract Internet users to a portal that offered both competing and related financial services, presumably for commercial gain. This is very like the example cited in the Policy, paragraph 4(b)(iv), and certainly amounts to bad faith for Policy purposes, as does allowing the current use of the Domain Name for a PPC advertising portal.”); WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name”).
The other factors cited by Complainant also are evidence of bad faith. WIPO Overview 3.0, section 3.1.1 (“If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, … (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors”); International Business Machines Corporation v. Laohu Liu,WIPO Case No. D2020-1650 (“First, there is no evidence of any active use of the disputed domain name apart from displaying ‘related links’ on a standard webpage provided by the registrar, presumably generating click-through income. … Second, Complainant is a famous company, well-known worldwide as a provider of products and services in the field of information technology. Third, since Respondent was never authorized or licensed to use Complainant’s IBM famous mark, there is no conceivable use of the disputed domain name that would not be in bad faith. Fourth, Respondent failed to reply to Complainant’s cease and desist letter dated April 13, 2020. Fifth, Respondent failed to respond to the Complaint or to provide any explanation whatsoever in this proceeding. … Given all these facts and circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith.”); Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517 (“given the Complainant’s worldwide reputation and presence on the Internet, [this] indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”); The Hongkong and Shanghai Banking Corporation Limited –v– Bill Lynn,WIPO Case No. D2001-0915 (“The Respondent did not respond substantively to the Complainant’s cease and desist letter. The Respondent effectively ignored the Complainant’s threat of legal proceedings. The Respondent has chosen not to respond to the Complaint. All in all, the Panel finds that the Respondent’s failure to express any denial or explanation despite the various opportunities offered to him reinforces the inference of bad faith registration and bad faith use.”).
Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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,
Bradley A. Slutsky
Sole Panelist
Date: February 24, 2022
1 Complainant also asserts that Respondent used a privacy service to conceal Respondent’s identity. Based on the WhoIs printout annexed to the Complaint, it appears that the missing information in the WhoIs record may have been redacted in order to comply with the European Union’s General Data Protection Regulation (“GDPR”). See Kite Pharma, Inc. v. Arturo Pereira, Interactive, LLC,WIPO Case No. D2021-2900. In the absence of further evidence on this point, the Panel does not rely on this assertion in finding that Respondent lacks rights or legitimate interests, or acted in bad faith, in connection with the disputed domain name.