WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Tomasz Tobola, FTTS Sp. z o.o.
Case No. D2018-0356
1. The Parties
The Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Tomasz Tobola, FTTS Sp. z o.o. of Warsaw, Poland.
2. The Domain Name and Registrar
The disputed domain name <apps-jll.com> is registered with NetArt Sp. z o.o. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center sent an email communication to the Parties in English and Polish on March 6, 2018, regarding the language of the proceeding, as the Complaint had been submitted in English and the language of the registration agreement for the disputed domain name was Polish. The Complainant submitted a request for English to be the language of the proceeding on March 9, 2018. The Respondent did not submit any communication regarding the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on April 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
The Complainant is a professional services and investment management firm specializing in real estate, which carries on its business globally under its acronym “JLL”, including in Poland, where the Respondent appears to be located.
The Complainant is the owner inter alia of the JLL trademarks, registered with the European Union Intellectual Property Office on January 31, 2012 under number 010603447, with the United States Patent and Trademark Office on April 5, 2012 under number 4564654 and with the Canadian Intellectual Property Office on August 27, 2012 under number TMA875711 (together, “the Marks”).
The Complainant is also the registrant of several domain names featuring the letters “jll”, its primary domain name being <jll.com> (registered in 1998).
The disputed domain name <apps-jll.com> was created on September 27, 2017 and resolves to a parking page lacking content.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Marks, in which the Complainant has rights, and is confusingly similar to the Marks insofar as the disputed domain name, <apps-jll.com>, contains the distinctive element “jll” in its entirety. The Complainant also asserts that the addition of the generic term “apps” (shorthand for applications) does not serve to distinguish the disputed domain name <apps-jll.com> from the Marks and only adds to the confusion insofar as the Complainant offers applications allowing mobile access to its products and services.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never gave permission to the Respondent to use the Marks in any manner, including in domain names. The Complainant also asserts that the Respondent does not appear to be known by the disputed domain name, is not sponsored by or affiliated with the Complainant in any way.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent had knowledge of the Marks and targeted them when registering the disputed domain name.
(iv) The Complainant submits that by holding passively the disputed domain name, the Respondent is using the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions, or to the Complainant’s representative’s cease and desist letters.
6. Discussion and Findings
6.1. Procedural Aspects
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is Polish, whilst adding: “However, on the registrar’s website is also available English version of the agreement”.
The Complainant in its Complaint formally requested that the language of the proceeding be English, on the ground that Polish would unfairly disadvantage and burden the Complainant which is unable to communicate in Polish, to which the Respondent failed to comment on or object despite the Center’s invitation to do so, expressed in Polish as well as in English, such invitation having been sent to the Respondent on March 6, 2018.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion in the spirit of fairness to both parties, which pursuant to paragraph 10(b) of the Rules have to be treated with equality, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and Polish, determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.
B. Failure to respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Marks with the disputed domain name <apps-jll.com>, it is evident that the latter consists solely of the Marks, preceded by the generic term “apps”, and followed by the generic Top-Level Domain (gTLD) “.com”.
The addition of generic terms does not typically serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
It is also well established that the gTLD “.com” does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.
The Panel finds that the disputed domain name <apps-jll.com> is confusingly similar to the Marks, which are incorporated in their entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses the disputed domain name in a business.
The website associated with the disputed domain name resolves to a parking page.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no business relationship with the Complainant, (ii) received no permission from the Complainant to register or use the disputed domain name and (iii) is not known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Marks.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks, which have been targeted in several recent domain name disputes. See Jones Lang Lasalle IP, Inc. v. Brendan Waights, Biracay Ltd, domain Admin, Epik.com Private Registration, WIPO Case No. D2017-1284; Jones Lang Lasalle IP, Inc. v. Stephanie Strome, WIPO Case No. D2017-2455; and Jones Lang Lasalle IP, Inc. v. James, WIPO Case No. D2018-0009.
The fact that the Respondent registered, in addition to the disputed domain name, at least two other domain names incorporating the generic term “apps” (<apps-unilever.com> and <apps-crh.com>) confirms the implausibility of a random registration of the disputed domain name and by contrast reveals a cybersquatting behavioral pattern.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <apps-jll.com>, be transferred to the Complainant.
Date: May 1, 2018