WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Name Redacted
Case No. D2018-1021
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, United States.
Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <jllexec.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2018. On May 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 May 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2018.
The Center appointed Mark Partridge as the sole panelist in this matter on June 18, 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 is a professional services and investment management firm specializing in real estate. Complainant provides its service under the JLL trademark, which it adopted in 2014. Complainant serves clients in over 80 countries from more than 300 corporate office locations worldwide. Complainant has obtained United States Trademark Registrations for the JLL trademark (Reg. Nos. 4564654 and 4709457) for a variety of real estate and investment services, the first of which registered on July 8, 2014, with claimed first use of March 4, 2014. Complainant has also obtained rights in Canada and the European Union. Complainant operates the website “www.jll.com” where it advertises its services under its JLL trademark. Complainant has also acquired rights in the top-level domain “.JLL”.
Respondent is identified in the WhoIs record as an individual. In fact, Complainant has provided evidence that that individual is a senior officer for Jones Lang LaSalle Incorporated, Complainant in this action. That individual has provided a sworn affidavit attesting to the fact that she did not register the disputed domain name. The record shows therefore that that individual is not in fact Respondent, and that Respondent has fraudulently used another’s name to mask the actual owner of the disputed domain name.
The disputed domain name <jllexec.com> was acquired on February 27, 2018, and resolves to an inactive site. Complainant also provides evidence that the disputed domain name has been used for email, specifically directed at Complainant’s employees.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly to its JLL trademark, which Complainant claims to have used since 2014, only adding the descriptive term “exec.” Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not affiliated with Complainant, has not been authorized to use the JLL trademark, is not commonly known by the disputed domain name, and is not making any bona fide use of the disputed domain name. Complainant asserts that Respondent is using the disputed domain name to execute a phishing scheme against Complainant’s employees, posing as a senior officer of Complainant and sending fraudulent emails under her name via the disputed domain name.
Complainant asserts that Respondent registered and used the disputed domain name in bad faith because Respondent’s actions support a finding that it had actual notice of Complainant’s rights in the JLL trademark. Complainant notes that the disputed domain name resolves to an inactive page, which it asserts is sufficient to show bad faith use, but also that the disputed domain name is being used to execute a phishing scheme against Complainant’s employees. In sum, Complainant asserts that Respondent’s actions show it knew of and targeted Complainant’s trademark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant is required to prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) 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 Respondent in bad faith.
Further, paragraph 14(b) of the Rules states that:
“If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
This Panel finds that Respondent has been afforded a fair opportunity to present its case, so the Panel will proceed to a decision on the Complaint. Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant is still required to prove each of the three elements required under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Complainant has rights in the JLL trademark, as demonstrated by numerous trademark registrations, including U.S. registration number 4564654, which was issued on July 8, 2014. A trademark registration constitutes prima facie evidence of the validity of the trademark. See, e.g., National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Complainant’s trademark is used internationally and is especially well known in the United States.
The disputed domain name here includes an identical match to Complainant’s trademark. The addition of the descriptive, non-distinctive term “exec” does not reduce the confusing similarity of the disputed domain name with Complainant’s trademark. See, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. “Exec” is a shortened version of “executive,” an obvious and deceptive reference to an executive of Complainant.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's JLL trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the domain name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that it has not authorized Respondent’s use of the JLL trademark, and that Respondent is not commonly known by the name “JLL” or “JLL exec.” Complainant asserts that Respondent has not made any legitimate commercial or noncommercial use of the disputed domain name.
Respondent has not presented any evidence to rebut Complainant’s assertions.
Based on the record, the Panel finds that Complainant has satisfied its burden of presenting a prima facie case that Respondent lacks rights of legitimate interests in the disputed domain name. Notably, Respondent’s use undermines any potential claim of legitimate interests in the disputed domain name. Respondent fraudulently identified itself as a senior officer of Complaint, and that individual has attested to the fact that she did not register the disputed domain name. On the same day it registered the disputed domain name, Respondent attempted to use the disputed domain name to impersonate that individual by sending correspondence to at least three of Complainant’s employees requesting assistance in executing a financial transaction. This impersonation and action was “in furtherance of attempted fraud and theft,” undermining any claim of legitimacy. See The Hearst Foundation, Inc. and Hearst Communications, Inc. v. Name Redacted, WIPO Case No. D2016-2479.
Consequently, the Panel finds the record is sufficient to show that Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The facts presented support a finding that Respondent intentionally adopted Complainant’s JLL trademark to create the appearance of legitimacy in the execution of its phishing scheme. While this does not fit squarely within the enumerated examples of bad faith listed in the Policy, those factors are non-exclusive. Respondent’s intentional misidentification of a senior officer of Complainant in the WhoIs record and immediate use of the disputed domain name for fraudulent emails evidences a clear intent to trade off the goodwill of the JLL trademark at the time Respondent registered the disputed domain name for commercial gain. The phishing scheme itself is clear evidence of bad faith use. See, e.g., The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephan Chukwumaobim, WIPO Case No. D2012-1088. The only feasible explanation for Respondent’s registration and use of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name.
In total, the record is sufficient to support the conclusion that Respondent registered and used the disputed domain name in bad faith.
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 <jllexec.com> be transferred to Complainant.
Date: July 3, 2018
1 Respondent appears to have used the name and contact details of a senior officer of Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.