WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Oscar Dominguez, GSG Group
Case No. D2018-1093
1. The Parties
Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Oscar Dominguez, GSG Group of Los Angeles, California, United States.
2. The Domain Name and Registrar
The disputed domain name, <latinojll.org>, is registered with GoDaddy.com, LLC ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, the Registrar responded by email verifying that Respondent is listed as the registrant and providing the contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("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 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 19, 2018.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 21, 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. It owns a number of registrations for the mark JLL, including a United States federal registration for JLL for various services related to real estate (Reg No. 4,564,654) which issued July 8, 2014. It also uses the domain name <jll.com> for its website.
Respondent registered the disputed domain name on January 29, 2018. The disputed domain name directs to a web page parked by the Registrar.
Complainant objected to Respondent's registration in email communications sent in February and March 2018. According to the Complaint, Complainant did not receive a response.
5. Parties' Contentions
Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant's JLL mark, which is registered and used in a number of jurisdictions throughout the world, including the United States and Latin America.
The disputed domain name differs from Complainant's JLL mark only with the added generic, descriptive term "Latino". Because the JLL mark is so closely associated with Complainant, this addition only increases the similarity between the name and the mark – particularly in light of Complainant's offices in Latin America.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given authorized Respondent to use Complainant's trademarks in any manner, including in a domain name.
Respondent is not commonly known by the disputed domain name. The WhoIs record identifies the registrant name as "Oscar Dominguez" and the registrant group "GSG Group."
Respondent is using the disputed domain name to redirect visitors to a parked page with no content. Therefore, Respondent is not using the disputed domain name and cannot be making a legitimate use of the disputed domain name.
Registered and Used in Bad Faith
The disputed domain name was registered and is being used in bad faith.
Complainant and its JLL mark are known internationally and the mark has been used since March 4, 2014 – well before Respondent's January 29, 2018 registration.
Respondent's registration and non-use of a domain name that is confusingly similar to Complainant's mark support Complainant's assertion of bad faith registration and use.
Further, Respondent did not respond to the cease and desist letters sent by Complainant in an effort to resolve this matter.
On balance, it is more likely than not that Respondent knew of and targeted Complainant's JLL mark.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
To prevail, a complainant must prove, as to a disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). Not responding to a complaint does not automatically result in a finding for the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3. A complainant continues to have the burden of establishing each element. The Panel may, however, draw such inferences from Respondent's default as appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the mark through its United States federal trademark registration.
The disputed domain name is not identical to Complainant's mark. The question then becomes whether it (disregarding the top-level domain ".org") is confusingly similar to the mark. This typically involves a straightforward comparison of the textual portion of the mark with the domain name. See WIPO Overview 3.0, section 1.7. The Panel subscribes to the consensus view that the test for confusing similarity is satisfied where the mark is recognizable within the domain name, despite the addition of descriptive, geographical, or other terms. See WIPO Overview 3.0, section 1.8.
Here, the addition of the descriptive term "latino" does not differentiate or distinguish the disputed domain name from Complainant's mark.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (once complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent). The Panel finds that Complainant has made a prima facie showing under this element.
It does not appear that Respondent is commonly known by the disputed domain name. Complainant has not authorized Respondent's use. The disputed domain name directs to a "parking" site and there is no evidence of any use (or preparations to use) the disputed domain name in connection with a bona fide offering.
The Panel concludes that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name was registered and is being used in bad faith.
The disputed domain name resolves to a parking page; the fact that the disputed domain name is not actively used, however, does not prevent a finding of bad faith use. Complainant's rights in its JLL mark are well‑established, the mark appears to be well-known within its field, and Complainant's use predates registration of the disputed domain name. The Panel finds that it is most probable that Respondent was actually aware of Complainant's marks at the time the disputed domain name was registered and registered it with Complainant's mark in mind.
Under the totality of the circumstances, including the adverse inferences drawn from Respondent's failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using 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 <latinojll.org> be transferred to Complainant.
Debra J. Stanek
Date: July 4, 2018