ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Jones Lang LaSalle IP, Inc. v. Domain Admin, Whoisprotection.cc / hui wu, wuhui Case No. D2022-1174 1. The Parties 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 Domain Admin, Whoisprotection.cc, Malaysia / hui wu, wuhui, China. 2. The Domain Name and Registrar The disputed domain name is registered with Mat Bao Corporation (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2022. On April 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2022, 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 11, 2022, 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 the same day. 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 29, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2022. The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent's default on June 7, 2022. page 2 The Center appointed Petra Pecar as the sole panelist in this matter on June 9, 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 Background The Complainant is a wholly owned subsidiary of Jones Lang LaSalle Incorporated which along with all of its consolidated subsidiaries constitute the JLL group. The JLL group was formed by the merger of Jones Lang Wootton and Lasalle Partners in 1999. The Complainant is a professional services and investment management company specialized in real estate. The Complainant 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. In 2020, the JLL Group reported a revenue of USD 6.1 billion. The Complainant is the owner of various trademark registrations that comprise the term LASALLE, including the following: - Trademark registration No. 1603757 for "LASALLE" in China, registered on July 14, 2001, in Class 36; - Trademark registration No. 6280051 for "LASALLE" in the United States, registered on March 2, 2021, in Class 36; - Trademark registration No. T9915078J for "LASALLE INVESTMENT MANAGEMENT" in Singapore, registered on January 28, 2002, in Class 36. The Complainant has a significant Internet presence and is also the owner of numerous domain names that incorporate the LASALLE trademark, such as registered on December 3, 1998, and registered on May 7, 1995. The disputed domain name was registered on October 20, 2021, and at the moment of the decision resolves to a blank webpage without any content. The Complainant sent the cease-and-desist letter to the Respondent on December 8, 2021, but no response was received from the Respondent. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name consists merely of the Complainant's LASALLE trademark and an additional descriptive term "invest", that closely relates to and describes the Complainant's business, which makes the disputed domain name confusingly similar to the Complainant's trademark. In relation to that, the Complainant indicates previous UDRP decisions in which panels found that when a disputed domain name merely consists of a complainant`s trademark and an additional term that closely relates to and describes a complainant`s business, it is confusingly similar to the Complainant's trademark. Further, the Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not licensed, authorized or permitted the Respondent, who is not associated with the Complainant in any way, to register domain names which incorporate the Complainant's trademarks. Also, the Complainant indicates that the disputed domain name resolves to a blank page without any content. page 3 The Complainant contends that the disputed domain name is registered and is being used in bad faith and also claims that the Respondent must have been aware of the Complainant and its trademark at the time of the registration of the disputed domain name. The Complainant argues bad faith use in accordance with passive holding doctrine, since the disputed domain name resolves to an inactive webpage. Finally, the Complainant states that the Respondent had employed a privacy shield service to conceal its identity, which is a common indicator of bad faith. Also, the Complainant contends that the Respondent intended to cause confusion among internet users by using the Complainant's trademark in its entirety within the disputed domain name with the addition of a descriptive term "invest", which describes the Complainant's business. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Even if the Respondent did not file a Response to the Complainant's contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. "A Panel 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", as indicated in paragraph 15(a) of the Rules. Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (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 by the Respondent in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must, firstly, establish rights in a trademark or service mark and, secondly, establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, "WIPO Overview 3.0"). The Panel finds that the Complainant has provided sufficient evidence of ownership of registrations for the LASALLE and LASALLE INVESTMENT MANAGEMENT trademarks in various jurisdictions, demonstrating that it has rights in the LASALLE and LASALLE INVESTMENT MANAGEMENT trademarks, through registrations and use (which, the Panel notes in relation to the third element of the Policy, predate the registration date of the disputed domain name). The Panel finds that the disputed domain name consists of the Complainant's LASALLE trademark in its entirety with the additional term "invest" and the generic Top-Level domain ( "gTLD") ".com". The additional term "invest" is also included in the Complainant's LASALLE INVESTMENT MANAGEMENT trademark. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademarks, in accordance with section 1.8 of the WIPO Overview 3.0. page 4 Finally, it is well accepted practice by UDRP panels that a gTLD, such as ".com", is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). Accordingly, the Panel shall not take the applicable gTLD ".com" into account for the purpose of assessment of confusing similarity. In accordance with the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its LASALLE and LASALLE INVESTMENT MANAGEMENT trademarks. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied the second element, as set out in paragraph 4(a)(ii) of the Policy (see also WIPO Overview 3.0, section 2.1.). Moreover, the Policy provides guidance to respondents on how to demonstrate rights or legitimate interests in the domain name. In particular, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name, including: (i) use of the domain name "in connection with a bona fide offering of goods or services"; or (ii) demonstration that the Respondent has been "commonly known by the domain name"; or (iii) "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 Panel finds that the Respondent has failed to provide any evidence of license or authorization to use the Complainant's trademarks. The Respondent has also not provided any evidence that he is known by the trademarks or the disputed domain name. The Respondent is a natural person who does not appear to have any connection with the disputed domain name. The Respondent did not provide any counterevidence or argument that would indicate any rights or legitimate interest in respect to the disputed domain name. The disputed domain name resolves to a blank, inactive webpage that per se does not allow identification of any right or legitimate interest on the Respondent's side. Absence of any clear circumstances that would indicate a right or legitimate interest of the Respondent in respect to the disputed domain name along with the absence of any response from the Respondent that could indicate the existence of such rights or interest, is thereby detrimental to the Respondent and affects the view of the Panel in respect to the satisfaction of the second UDRP element. The Panel therefore finds that the Complainant has made a prima facie demonstration of the Respondent's lack of rights or legitimate interests in respect of the disputed domain name, which has not been rebutted by the Respondent, and that the Complainant has accordingly established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires the Complainant to demonstrate that the Respondent registered and is using the disputed domain name in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a Respondent's bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when, by using the 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 trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. page 5 The Complainant has used its LASALLE and LASALLE INVESTMENT MANAGEMENT trademarks since 1999, which significantly predates the Respondent's registration of the disputed domain name on October 20, 2021. The Panel finds that the Respondent must have been fully aware of the Complainant and its trademarks, especially having in mind the significant Internet presence and worldwide realestate-market presence of the Complainant. In that sense, it seems rather implausible that the Respondent has registered the disputed domain name without the Complainant and its trademarks on his mind. The Respondent failed to respond to the Complainant's contentions and has provided no evidence of any actual or contemplated good faith use of the disputed domain name. The Complainant had previously sent a cease-and-desist letter to the Respondent and has not received any response by the Respondent. The failure to respond to the demands contained in the cease-and-desist letter can provide strong support to a conclusion that the disputed domain name has been registered and is being used in bad faith in accordance with section 3.2.1 of the WIPO Overview 3.0. The fact that there is no active website associated with the disputed domain name does not prevent a finding of bad faith use and registration. In that sense, the Panel has made an assessment as to whether the lack of actual use of the disputed domain name can lead to a finding of bad faith against the Respondent. The doctrine of so-called "passive holding" where a disputed domain name resolves to a blank, "coming soon", or similar page has been considered by numerous panels previously. In accordance with section 3.3 of the WIPO Overview 3.0, the relevant factors that should be taken into account when assessing the existence of bad faith in the passive holding of a domain name are the following: (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 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. It should also be borne in mind that it is not required that all the above-listed factors be present in order to establish bad faith use of the disputed domain name. In this particular case, the Panel is of the opinion that all the factors described in section 3.3 of the WIPO Overview 3.0 are present to some extent. In particular, the Complainant's LASALLE and LASALLE INVESTMENT MANAGEMENT trademarks should be observed as sufficiently distinctive; the Respondent has failed to provide any response to the Complaint and the Complainant's cease-and-desist letter and has therefore failed to provide any justification for the registration and use of the disputed domain name; the complainant has registered the disputed domain name through a privacy shield, thereby concealing his identity; finally, it seems rather unlikely that even if the disputed domain name was put to actual use, such use would be in good faith. Based on the foregoing reasons, the Panel finds that the passive holding of the disputed domain name in the present case should be observed as use in bad faith. The Panel also notes that concealing the Respondent's identity through a privacy shield service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant is also an indication of bad faith, in accordance with section 3.6 of the WIPO Overview 3.0. Given these circumstances and the fact that the Respondent failed to submit a response or to provide any evidence of actual possible good-faith use, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. page 6 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. /Petra Pecar/ Petra Pecar Sole Panelist Date: June 23, 2022
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