WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Registration Private, Domains By Proxy, LLC / Kent Simmons
Case No. D2018-1246
1. The Parties
Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America (“United States” or “US”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Kent Simmons of Lebanon, New Jersey, United States.
2. The Domain Name and Registrar
The disputed domain name <arn-jll.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On June 13, 2018, Respondent sent an informal email communication. On June 18, 2018, Complainant requested a two-day extension of the deadline to file an amendment to the Complaint. The Center granted the requested extension and confirmed that the new deadline for an amendment to the Complaint was June 20, 2018. Complainant filed an amended Complaint on June 20, 2018.
The Center verified that the Complaint together with the amended 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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it will proceed to appoint the Panel on July 12, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 27, 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 the owner of registrations for the word service mark JLL on the registers of several trademark offices, including on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 4564654, dated July 8, 2014, in international classes (“ICs”) 35, 36, 37, and 42, covering, inter alia, real estate services, as further specified; on the register of the Canadian Intellectual Property Office (“CIPO”), registration number TMA875711, dated April 15, 2014, in ICs 35, 36, 37, and 42, and; on the register of the European Union Intellectual Property Office (“EUIPO”), registration number 010603447, dated August 31, 2012, in ICs 36, 37 and 42.
Complainant is a professional services and investment management firm specializing in real estate. Complainant has a workforce of over 82,000 employees and serves clients in over 80 countries from more than 300 corporate office locations worldwide. Complainant is a Fortune 500 company. Complainant maintains 100 web sites globally. Its principal website is at “www.jll.com”.
Complainant uses the domain <@am.jll.com> for its US employee email addresses, with the “am” designating “American”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on April 5, 2018.
There is no indication on the record of this proceeding of any active use by Respondent of the disputed domain name.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it is the owner of rights in the trademark JLL and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not sponsored by or affiliated with Complainant; (2) Complainant has not given permission to Respondent to use its trademark in the disputed domain name or otherwise; (3) Respondent is not commonly known by the disputed domain name, and; (4) Respondent has not made any legitimate use of the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s trademark is well known internationally, and Respondent knew or should have known of Complainant’s trademark when Respondent registered the disputed domain name; (2) passive holding of a disputed domain name may evidence bad faith; (3) there is no plausible reason for Respondent to have registered the disputed domain name other than to take unfair advantage of Complainant; (4) Respondent failed to respond to cease and desist communications from Complainant; (5) the foregoing combination of factors makes it more likely than not that Respondent knew of and targeted Complainant’s trademark when it registered the disputed domain name.
Complainant requests that the Panel direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not submit a formal response to Complainant’s contentions. Respondent transmitted an email response to the center that stated in its entirety:
“We are not the registrants of the above cited Domain Name. We are not offering a private WhoIs function to any registrant. We have no knowledge of any such registration. We are unable to forward your letter or complaint to any person or company in relation to this matter.”
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in the record of registration. Email and express courier notification was successful, and Respondent responded by informal email to the Complaint. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief.
These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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 in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of registration of the service mark JLL on the registers of three trademark offices (i.e., the USPTO, CIPO, and EUIPO), and of use of that service mark in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the service mark. The Panel determines that Complainant has rights in the service mark JLL.
The disputed domain name directly incorporates the service mark of Complainant, adding the prefix “arn”. As Complainant has argued, the term “arn” is visually quite similar to the term “am” that Complainant uses as part of its email address for US employees. An Internet user would be likely to confuse an email address using the domain <@arn-jll.com> with the email address domain <am.jll.com> routinely used by Complainant’s employees. The Panel determines that the disputed domain name is confusingly similar to Complainant’s service mark.
The Panel determines that Complainant owns rights in a service mark, and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
The disputed domain name has not been used in connection with an active website. In the circumstances present here, absence of use does not establish rights or legitimate interests in the disputed domain name.
The disputed domain name does not on its face otherwise suggest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).
The list of potential bad faith elements in paragraph 4(b) of the Policy is illustrative rather than exhaustive. Respondent has disclaimed ownership and knowledge of registration of the disputed domain name. This suggests, although it does not establish, that a party other than Respondent is the “registrant in fact” of the disputed domain name, and that this third party registered the disputed domain name through some form of subterfuge. Assuming the “registrant in fact” is a party other than Respondent that misrepresented its identity, this constitutes bad faith on the part of the registrant in fact. Respondent is the legal registrant of the disputed domain name and has effectively disclaimed any interest in the outcome of this proceeding, an implicit concession to a finding of bad faith. The Panel finds that Respondent, as the legal owner of registration, registered and is using the disputed domain name in bad faith within the meaning of the Policy.
Respondent may have undertaken the registration and passive holding of the disputed domain name and is misstating its “non-participation” in that registration. The disputed domain name is confusingly similar to the domain used by Complainant for its employee email in the United States. Confusingly similar email addresses are used in schemes to defraud through misrepresentation of identity. See, e.g., Windrock Inc. v. WhoisGuard, Inc. / Aaron Scot, WIPO Case No. DCO2018-0016. The fact that there is no apparent reason on the record for Respondent to have selected the distinctive disputed domain name <arn-jll.com> suggests a material risk that the disputed domain name could be used by Respondent or an unknown third party to engage in misrepresentation of identity involving Complainant and/or its employees.
On this basis, the Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant.
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 <arn-jll.com> be transferred to Complainant.
Frederick M. Abbott
Date: August 6, 2018