ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Jones Lang LaSalle IP, Inc. v. Stephanie Egli, Starbuckscorp Case No. D2022-4282 1. The Parties Complainant is Jones Lang LaSalle IP, Inc., United States of America ("United States" or "U.S."), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Stephanie Egli, Starbuckscorp, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2022. On November 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to Complainant on November 14, 2022 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 November 15, 2022. 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 November 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 14, 2022. The Center appointed Scott R. Austin as the sole panelist in this matter on December 20, 2022. The Panel finds that it was properly constituted. page 2 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 Complainant states in its Complaint and provides evidence in the respective Annexes sufficient to support the following: Complainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated, a real estate professional services and investment management firm which provides its real estate development services under the mark JONES LANG LASALLE (the "JONES LANG LASALLE Mark"), and along with the other consolidated subsidiaries comprises the "JLL group" (collectively "Complainant"). 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, since 2014 Complainant has officially marketed itself under the brand JLL (the "JLL Mark", and collectively with the JONES LANG LASALLE Mark, the "JLL Marks"). Headquartered in Chicago, the JLL group is an industry leader in property and corporate facility management services, with a portfolio of 5 billion square feet worldwide, a workforce of approximately 91,000, serving clients in over 80 countries from more than 300 corporate office locations worldwide. In 2020, the JLL group reported a revenue of USD 6.1billion. In 2015, JLL achieved Fortune 500 status and was recognized by Fortune Magazine as one of the "World's Most Admired Companies" in 2021 for the sixth consecutive year. Complainant has a large Internet presence and is the owner of numerous domain names, which incorporate the JLL Marks, including official domain names registered on November 20, 1998, and . It maintains 100 websites globally and according to Similarweb.com, Complainant's official JLL Mark websites accessed through its official domain names and (the "Official JLL Mark Websites") received 1.19 million and 86.91K visitors during the period of February 2021 to July 2021, respectively. Complainant has used the JLL Marks for its real estate development and investment management services and owns multiple trademark registrations which predate the registration of the disputed domain name, including U.S. Trademark Registration No. 2,593,380, JONES LANG LASALLE, registered on July 16, 2002, for a range of real estate management, investment and development services in International Classes 36 and 37; European Union Trademark Registration 001126291, JONES LANG LASALLE, registered on June 13, 2000, for a range of real estate management, investment and development services in International Classes 36, 37 and 42; European Union Trademark Registration 011014065, JONES LANG LASALLE (JLL), registered on April 12, 2012, for a range of real estate management, investment and development services in International Classes 35, 36, 37 and 42; and Canadian Trademark Registration No. TMA875712, JONES LANG LASALLE (JLL), registered on April 15, 2014, for a range of real estate management, investment and development services in International Classes 35, 36, 37 and 42. Respondent registered the disputed domain name on February 28, 2022, and it resolves to an inactive website comprised of a blank page with no content. page 3 5. Parties' Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate". Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that the requirements for each of the elements listed in paragraph 4(a) of the Policy have been satisfied. The Panel will address its findings on each of these elements in more detail below. The standard of proof under the Policy is often expressed as the "balance of the probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.2. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant claims trademark rights in the JLL Marks for its real estate management, investment and development services in its registrations for the JLL Marks dating back to 2002. Sufficient evidence has been submitted in the form of electronic copies of valid and subsisting trademark registration documents in the name of Complainant and therefore, Complainant has demonstrated it has rights in the JLL Marks. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. With Complainant's rights in the JLL Marks established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant's JLL Marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a "reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name". WIPO Overview 3.0, section 1.7. Prior UDRP panels have also held "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". See, L'Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; see also, Wal-Mart Stores, Inc. v. MacLeod d/b/a/ For Sale, WIPO Case No. D2000-0662. page 4 A side-by-side comparison between the disputed domain name and Complainant's Mark shows the disputed domain name is essentially identical to the JONES LANG LASALLE Mark as well as the official domain name used for one of Complainant's Official JLL Marks Websites. Complainant's JONES LANG LASALLE Mark is incorporated in its entirety except only the initial "L" of the trailing term "LaSalle" is used omitting the remaining letters "asalle" from the final term "LaSalle" but the dominant portion of Complainant's registered JONES LANG LASALLE Mark is incorporated into and remains recognizable in the disputed domain name, followed only by the Top-Level Domain ("TLD") ".com". Prior UDRP panels have found the TLD, being viewed as a standard registration requirement, may typically be disregarded under the paragraph 4(a)(i) analysis. See, WIPO Overview 3.0, section 1.11; see also L'Oréal v. Tina Smith, WIPO Case No. D2013-0820. Complainant also contends that the disputed domain name is a purposeful misspelling of Complainant's JONES LANG LASALLE Mark and must be considered confusingly similar to Complainant's trademark because the disputed domain name omits to include the remainder of the word "LASALLE" and opts for just the letter "L". As noted above, however, the distinctive elements of Complainant's mark remain. Prior panels have held 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. See WIPO Overview 3.0, section 1.9; See also CM-CIC Asset Management v. Private Registrant, Digital Privacy Corporation / Jonathan Richardson, WIPO Case No. D2016-2390. Based on the above, this Panel finds that neither the omission of letters from the trailing term "LaSalle" of Complainant's registered JONES LANG LASALLE Mark nor the gTLD ".com" would prevent a finding of confusing similarity between the disputed domain name and Complainant's well-known JLL Marks, which remains recognizable as incorporated into the disputed domain name. Accordingly, the Panel finds the disputed domain name confusingly similar or identical to the JLL Marks in which Complainant has rights and Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent permission to use Complainant's trademarks in any manner, including in domain names. Prior UDRP panels have held "In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed." Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875. Second, Complainant contends Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests under Policy paragraph 4(c)(ii). Complainant has shown in the WhoIs information evidence submitted in its Annexes that Respondent, identified as "Stephanie Egli" is not commonly known by the disputed domain name because it clearly bears no resemblance to the term "joneslangl.com". Prior UDRP panels have held where no evidence, including the WhoIs record for the disputed domain name, suggests that Respondent is commonly known by the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. page 5 It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant's trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. Most importantly, Complainant's evidence shows the disputed domain name resolves to an inactive website. Respondent, therefore, is not making a legitimate noncommercial or fair use of the disputed domain name nor using it in connection with a bona fide offering of goods or services to confer a right or legitimate interest because there is no evidence the disputed domain name is being used at all. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075. These facts establish Complainant's prima facie showing. Respondent has not provided any basis on which that showing may be overcome. Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Finally, Complainant must prove, by a preponderance of the evidence, that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. See, e.g., Hallmark Licensing, LLC v. EWebMall, Inc., WIPO Case No. D2015-2202. Paragraph 4(b) of the Policy sets out a nonexhaustive list of circumstances that point to bad faith conduct on the part of a respondent. The panel may, however, consider the totality of the circumstances when analyzing bad faith under Policy, paragraph 4(a)(iii) and may make a finding of bad faith that is not limited to the enumerated factors in Policy, paragraph 4(b). See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. First, Complainant contends that since Complainant has developed a strong global reputation in the "JONES LANG LASALLE" trademark, that Respondent was no doubt aware of the JLL Marks and intentionally targeted them in making their decision to configure and register the disputed domain name so closely similar to Complainant's JONES LANG LASALLE Mark. Given the widespread recognition of Complainant's JLL Marks worldwide shown in the evidence noted under Section 4 above, including the U.S., where Respondent appears to be located, the decades of registered use of the JONES LANG LASALLE Mark prior to Respondent's assumed registration of the disputed domain name in February 2022, Respondent likely had actual knowledge of Complainant's rights when it registered the disputed domain name, which shows bad faith registration. See Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287. Further the facts set forth above make it reasonable for the Panel to conclude it is more likely than not that Respondent targeted Complainant's trademark to use it to trade on Complainant's reputation and goodwill, and Respondent is found, therefore, to have registered and used the disputed domain name in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba WhoIs Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754. Second, as noted in 6B above, Respondent is passively holding the disputed domain name based on the browser flag it generates: "This page isn't working" and noting that the disputed domain name "didn't send any data", which represents either non-use or linking to an inactive website. Complainant contends that the disputed domain name has never resolved to an active page, as it has remained inactive since its registration. Prior UDRP panels have found under the doctrine of passive holding that that the word bad faith "use" in the context of paragraph 4(a)(iii) does not require a positive act on the part of the Respondent - instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii). WIPO Overview 3.0, Section 3.3. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003); see also Alitalia-Linee Aeree Italiane S.p.A v. Colour page 6 Digital, WIPO Case No. D2000-1260. The disputed domain name here is confusingly similar to Complainant's JLL Marks, and Respondent has made no use of the disputed domain name, factors which this Panel agrees with prior decisions should be duly considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232 (concluding respondent's passive holding of the domain name satisfies Policy paragraph 4(a)(iii). Third, bad faith use also seems especially appropriate given the totality of facts here. Respondent registered the disputed domain name in 2022, decades after Complainant began using its JONES LANG LASALLE mark, Respondent has concealed its identity, and failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name. Complainant's JONES LANG LASALLE Mark has grown in recognition to the level of worldwide renown, supporting the implausibility of any good faith use to which the disputed domain name may now be put. The factors present here are well-settled as supporting a finding of bad faith use for passive holding or non-use of a disputed domain name that is confusingly similar to a complainant's mark. See, Instagram, LLC v. Asif Ibrahim, WIPO Case No. D2020-2552; WIPO Overview 3.0, Section 3.3. Finally, although the disputed domain name currently appears to be inactive, Complainant shows that it has been set up with mail exchanger (MX) records so that it may be actively used for email purposes and contends that emails emanating from the disputed domain name could not reasonably be used for any good faith purpose given the similarity to Complainant's trademark. Instead, Complainant contends it is more likely such configuration presents the real potential to be used by Respondent to facilitate fraudulent actively such as phishing, impersonating or passing off as Complainant. Previous UDRP panels presented similar facts have found the presence of configured MX records supportive of a finding of bad faith registration and use stating, "the disputed domain names indicate that the Respondent has connected the disputed domain names to email servers, which creates a serious risk that the Respondent may be using the disputed domain names, which are confusingly similar to the Complainant's trademark, for misrepresentations and/or phishing and spamming activities". Alain Afflelou Franchiseur v. Lihongbo, Lihongbo, WIPO Case No. D2020-2075. The Panel finds Complainant's arguments and evidence persuasive and has received no arguments or evidence from Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) 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 Complainant. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: January 3, 2023
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