WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Domain Registrar, Proxy Name Services LLC
Case No. D2018-0939
1. The Parties
The Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Registrar, Proxy Name Services LLC of Meridian, Idaho, United States, represented by McFarland Ritter PLLC, United States.
2. The Domain Name and Registrar
The disputed domain name <jllargentina.net> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 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 verified that the Complaint 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 May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. A communication was received from the Respondent on May 29, 2018. The Response was filed with the Center on June 1, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on June 20, 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 headquartered in Chicago, Illinois, and formed in 1999 by the merger of Jones Lang Wootton and LaSalle Partners. The Complainant is a leader in property and corporate facility management services, with a workforce of some 70,000 employees serving clients in 280 corporate office locations in more than 80 countries. The Complainant manages real estate assets valued at USD 60.1 billion, and has received a number of awards and accolades, including recognition in Fortune Magazine and Forbes.
The Complainant has provided services under the JLL mark since as early as 2014, and holds trademark registrations for the JLL mark in the United States and in Argentina, specifically United States registration No. 456454, registered July 8, 2014; United States registration No. 4709457, registered March 24, 2015; INPI registration Nos. 3143107 & 3143108, registered April 4, 2016; and INPI registration No. 3143109, registered April 6, 2013. The Complainant has registered and uses a number of domain names incorporating the Complainant's marks with its websites, including <jll.com>, registered on November 20, 1998. Since 2015 the Complainant also has used the ".jll" Top-Level Domain ("TLD"). The Complainant maintains a substantial social media presence on Facebook, LinkedIn and Twitter, including pages for "JLL Argentina".
The Respondent registered the disputed domain name on February 2, 2018, according to the WhoIs records. The WhoIs record submitted by the Complainant indicates that the Respondent is the "Registrant Org" of another 25,386 other domain names. The disputed domain name currently resolves to a website displaying the following message: "There's nothing here, yet. Build something Amazing." The second sentence is hyperlinked and currently resolves to the website of Heroku at "www.heroku.com", a cloud platform company acquired by Salesforce in 2010.
Upon learning of the Respondent's registration and use of the disputed domain name, the Complainant through its representative issued a cease and desist letter to the Respondent on February 12, 2018, requesting the transfer of the disputed domain name. The Respondent replied to the Complainant representative on the same date, stating "we are just the proxy name service" but further advising "I've blocked the domain and will remove the renewal so that it cannot be used. I provided a copy of the complaint to the accused party."
The Complainant's representative replied on February 13, 2018, again requesting the transfer of the disputed domain name. The Respondent replied, "We will not transfer a domain into the hands of another party without a court order." Subsequently, on April 4, 2018, the Complainant's representative contacted the Respondent again, advising a refusal to transfer the disputed domain name would result in the filing of a UDRP complaint. The Respondent in reply again advising that the disputed domain name was blocked and could not be used or renewed, and further stated: "There is no malicious intent here and we reserve the right to comply with the UDRP guidelines just as you do. We do not transfer without an order."
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's JLL marks. According to the Complainant, the Complainant's JLL mark is recognizable within the disputed domain name, and the addition of the geographically descriptive term "argentina" does not preclude a finding of confusing similarity for purposes of the first element of the Policy. The Complainant further contends that the Respondent's use of this particular geographically descriptive term in conjunction with the Complainant's JLL mark only serves to underscore and increase the confusing similarity of the disputed domain name to the Complainant's mark, particularly in light of the Complainant's established presence in Argentina dating back to 1999.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant's mark, and that the Respondent has not been commonly known by the disputed domain name. The Complainant submits in the absence of such factors no actual or contemplated bona fide use of the disputed domain name reasonably can be claimed. According to the Complainant, the disputed domain name has been used to redirect Internet users to a website resolving to a blank page, except for a web page on Joseph O'Mallley, which the Respondent indicated was a cached page.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that its JLL trademark is registered across numerous countries and is a well-known mark. According to the Complainant, the Respondent knew or should have known of the JLL mark when registering the disputed domain name. The Complainant contends that the Respondent targeted the Complainant's mark, and that the Respondent's passive holding of the disputed domain name and use of a privacy service to conceal its identity constitute bad faith.
The Response identifies the Respondent as Proxy Name Services LLC.
The Respondent denies that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.
The Respondent denies that the disputed domain name was registered to prevent the Complainant from reflecting its mark in a corresponding domain name, and denies that the Respondent has engaged in a pattern of such conduct.
The Respondent submits that the Complainant and the Respondent are not competitors and denies that the disputed domain name was registered by the Respondent for the purpose of disrupting the Complainant's business.
The Respondent also denies that the disputed domain name was registered in an intentional attempt to attract for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Respondent submits the Complainant does not allege that the Respondent has engaged in any of the bad faith conduct described in paragraph 4(b)(i)-(iv) of the Policy. The Respondent then states as follows: "The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name to the Complainant."
6. Discussion and Findings
A. Respondent Identity
Paragraph 1 of the Rules defines the respondent as "the holder of a domain name registration against which a complaint is initiated." In many instances, however, the WhoIs-listed registrant is a "privacy" or "proxy" registration service. Paragraph 4(b) of the Rules provides that updates to the respondent's data, including a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.4.
It has become routine for privacy or proxy registration services to disclose underlying customer data upon commencement of a UDRP proceeding. The Panel thus finds it incongruous, if the Respondent was providing proxy registration services in this case, that the Respondent did not disclose to the Registrar any underlying customer data. The Respondent maintains a website, which the Panel has visited.1 In a web document the Respondent states that it "routinely receives notices from its affiliated registrars" regarding the filing of administrative proceedings under the Policy, and thereupon "cancels its privacy service for the domain name that is the subject of the Policy dispute and notifies its customer about the cancellation."2 Yet there is no indication in the record that the Respondent, if it received notice from the Registrar of the filing of the instant administrative proceeding, cancelled its privacy service for the disputed domain name or otherwise disclosed to the Registrar the underlying customer data.
The Panel further notes that the Respondent offers to each of its "Proxy Name Services Users" ("Users") a free domain name for one year upon acceptance of the terms of the Respondent's Proxy Name Services Agreement ("Agreement"). The Agreement specifies that "at no time will [Users] purchase or otherwise obtain ownership rights in any Domain Name from [Respondent]." Instead, each participating User will receive rights to the exclusive use of a domain name from the Respondent until the Agreement is terminated or cancelled by the Respondent.3
The Respondent may indeed furnish privacy or proxy registration services to any number of domain name registrants, but the Panel finds no evidence in the record of this case to support the Respondent's claim to have been providing such services for the disputed domain name. Having considered the totality of the facts and circumstances in the record, the Panel concludes in this instance that the Respondent is the holder of the disputed domain name against which the instant Complaint was initiated, and as such properly named as the WhoIs-listed registrant in the Complaint. See WIPO Overview 3.0, section 4.4.5. The Panel notes that the Respondent has not contended otherwise in the Response submitted to the Center.
B. Respondent Consent to Transfer
As noted earlier, the Complainant made several attempts to persuade the Respondent to transfer the disputed domain name to the Complainant without the necessity of formal proceedings. The Respondent twice refused the Complainant's request, and while denying any "malicious intent" stated there would be no transfer of the disputed domain name without an order, which in turn appears to have prompted the Complainant's commencement of proceedings under the Policy.
The Respondent has now consented to the transfer of the disputed domain name, which is the remedy sought by the Complainant. Even when the parties to a UDRP proceeding have not been able to settle their dispute, where the respondent has given its consent on the record to the transfer remedy sought by the complaint, a number of panels have ordered the requested remedy solely on the basis of such consent, giving effect to an understood party agreement as to the disposition of their case. WIPO Overview 3.0, section 4.10 and relevant decisions cited therein.
In some cases, however, and notwithstanding the respondent's consent to the transfer remedy sought by the complainant, a panel in its discretion may find it appropriate to proceed to a substantive decision on the merits. Scenarios in which panels have found it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent's consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights. Id.
After careful consideration of the facts and circumstances in the record, and taking into account the Respondent's consent to the transfer remedy sought by the Complainant, the Panel deems it appropriate in this case to order the transfer of the disputed domain name to the Complainant without proceeding to a substantive decision on the merits. Accordingly, the Panel will do so.
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 <jllargentina.net> be transferred to the Complainant.
William R. Towns
Date: July 2, 2018
1 "www.proxynameservices.domains". The Panel within the general panel powers articulated in paragraphs 10 and 12 of the Rules may undertake limited factual research into matters of public record where such information may be useful in assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 4.8. See, e.g., Serverscheck BVBA v. Michael Starr, DCC Corporate, WIPO Case No. D2016-1958.
2 The document is entitled "Terms," and can be accessed at http://proxynameservices.domains/policies/2017/01/02/terms.html. See Terms, section II.XV.
3 See Terms, section II ("Domain Name Rights").