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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Rob Monster, DigitalTown, Inc.

Case No. D2018-1299

1. The Parties

Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Rob Monster, DigitalTown, Inc. of Bellevue, Washington, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <joneslanglasalle.work> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. The Center received email communications from Respondent on June 14, 2018 and July 6, 2018. Respondent did not submit any substantive response.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 17, 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

Complainant, Jones Lang LaSalle IP, Inc. is a professional services and investment management firm specializing in real estate. Complainant, which is based in Chicago, Illinois, United States, was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999. Complainant is the owner of several federal trademark registrations in the United States for the mark JONES LANG LASALLE both as a word mark and design mark, the earliest of which issued to registration on July 16, 2002 (Registration No. 2593380). Complainant also owns and uses the domain names <jll.com> and <joneslanglasalle.com>, both registered in 1998, to provide information concerning Complainant and its services.

Respondent, Rob Monster, DigitalTown, Inc., is based in Bellevue, Washington, United States. Respondent registered the disputed domain name on December 19, 2017. Complainant sent Respondent a demand letter regarding the disputed domain name on or about January 31, 2018. While the Parties had subsequent communications, the Parties were not able to resolve the matter. The disputed domain name currently redirects to Respondent’s website at “www.digitaltown.com”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has owned and used the JONES LANG LASALLE name and mark since 1999 in connection with its real estate services. Complainant maintains that it is an industry leader in property and corporate facility management services with a workforce of 82,000 employees, clients in over 80 countries and more than 300 corporate offices worldwide.

Complainant contends that the disputed domain name is confusingly similar to Complainant’s JONES LANG LASALLE mark as it consists solely of the JONES LANG LASALLE mark in its entirety. Complainant also contends that the generic Top Level Domain (“gTLD”) extension “.work” used for the disputed domain name should be disregarded, as well as the deletion of spaces in composing the disputed domain name.

Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent has no connection of affiliation with Complainant, is not commonly known by the disputed domain name, and has not received any license or authorization to register the disputed domain name. Complainant further asserts that because Respondent registered the disputed domain name well after Complainant established rights in its JONES LANG LASALLE trademark, Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s website at “www.digitaltown.com” and to offer the disputed domain name for sale evinces a lack of rights or legitimate interests in the disputed domain name.

Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith as Respondent has demonstrated knowledge and familiarity with Complainant’s JONES LANG LASALLE brand by registering a disputed domain name that is confusingly similar to Complainant’s JONES LANG LASALLE mark and <joneslanglasalle.com> domain name. Complainant further asserts that Respondent knew, or should have known, of the existence of Complainant’s JONES LANG LASALLE mark on account of the fact that Complainant is a Fortune 500 company that is well known in its industry. Complainant also argues that Respondent’s bad faith is established by Respondent’s use of the confusingly similar disputed domain name to redirect web users to Respondent’s website at “www.digitaltown.com”. Complainant further contends that Respondent’s bad faith is established by Respondent’s pattern of registering multiple domain names based on the trademarks of well-known brands and businesses and by Respondent’s offer to sell the disputed domain name on Respondent’s website at “www.digitaltown.com”. Lastly Complainant asserts that Respondent has acted in bad faith in failing to transfer the disputed domain name to Complainant after Complainant sent a demand letter on or about January 31, 2018.

B. Respondent

Respondent did not reply to Complainant’s substantive contentions. On or about June 14, 2018, Respondent indicated that it was willing to transfer the disputed domain name to Complainant, but requested that proof be submitted showing that Complainant’s representative was authorized to act on behalf of Complainant or that Complainant open an account with the Registrar. The Parties were unable to come to an agreement and ultimately Complainant chose to proceed with the instant proceeding.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the JONES LANG LASALLE mark in connection with its real estate service. Complainant has also provided evidence that the JONES LANG LASALLE mark has been registered in the United States, where Respondent is located, well before Respondent registered the disputed domain name.

With Complainant’s rights in the JONES LANG LASALLE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD such as “.work”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s JONES LANG LASALLE mark as it incorporates the JONES LANG LASALLE mark in its entirety in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s JONES LANG LASALLE mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

The evidence submitted in this proceeding shows that Complainant adopted and has been using the JONES LANG LASALLE mark well before Respondent registered the disputed domain name. The evidence also shows that Complainant enjoys some notoriety as a professional services and investment management company specializing in real estate. Given that the disputed domain name fully consists of the JONES LANG LASALLE mark with the gTLD extension “.work”, which could be seen as relating to a website concerning activities of Complainant or employment at Complainant, it appears more likely than not that Respondent, who has failed to substantively respond or contest this matter, was aware of Complainant’s rights when it registered the disputed domain name. As the evidence before the Panel only shows that Respondent used the disputed domain name to redirect web traffic to Respondent’s website at “www.digitaltown.com”, it is likewise likely, on the balance of the probabilities, that Respondent registered the disputed domain name for purposes of exploiting Complainant’s established rights in the JONES LANG LASALLE mark, and not for some other purpose.

In sum, given that Complainant has established with sufficient evidence that it owns rights in the JONES LANG LASALLE mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

In view of the fact that the disputed domain names fully includes the JONES LANG LASALLE mark, it is easy to infer that Respondent was likely aware of Complainant’s rights in the JONES LANG LASALLE mark when Respondent registered the disputed domain name. In addition, given that Respondent registered and has used the disputed domain name to redirect web traffic to a website at “www.digitaltown.com” that promotes the services of Respondent’s company, it appears more likely than not that Respondent registered the disputed domain name for Respondent’s profit. As Respondent has chosen not to contest the matter, it appears unlikely that Respondent had any legitimate purpose for registering and using the disputed domain name either at the time of registration or going forward.

In sum, what the evidence shows here is that Respondent more likely than not knowingly registered and is using the disputed name in bad faith to profit from Complainant’s rights in the JONES LANG LASALLE name and mark. Accordingly, the Panel finds that Complainant succeeds under this element 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 <joneslanglasalle.work> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: July 30, 2018

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