WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. John Micheal, Kenny Kay
Case No. D2018-1377
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 John Micheal, Kenny Kay of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <usa-jll.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 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 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 June 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on July 23, 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 publicly traded company (NYSE: JLL), established in 1999 that provides professional services including facility management and investment management specializing in real estate. Since 2014 the Complainant has officially marketed itself under the name JLL and is the owner of the following trademark registrations:
- Nigeria registered trademark JLL, registration number 5402, registered on March 7, 2014 for services in class 36;
- Nigeria registered trademark JLL registration number 5398, registered on March 7, 2014 for services in class 37;
- United States registered trademark JLL registration number 4564654, registered on July 8, 2014 for services in international class 35;
- United States registered trademark JLL registration number 4709457, registered on March 24, 2015 for services in international class 036;
- Canada registered trademark JLL, registration number TMA875711, registered on April 15, 2014 for services in classes 35, 36, 37 and 42;
- European Union trademark JLL, registration number EUTM 010603447, registered on August 31, 2012 for services in classes 36, 37 and 42.
The Complainant is the owner of a large portfolio of domain names that incorporate the JLL service mark and maintains over 100 websites globally. In 2015, the Complainant acquired the rights to use the generic Top-Level Domain (“gTLD”) extensions “.jll” and “.lasalle”.
In the absence of any Response or other communication from the Respondent, the only available information about the Respondent and the disputed domain name is that provided in the Complaint and the registration details disclosed on the WhoIs.
The Respondent is identified as the owner of the disputed domain name which was registered on April 4, 2018 and resolves to a blank web page.
5. Parties’ Contentions
The Complainant relies on its rights in the above-listed trademark registrations and its rights at common law in the use of the JLL service mark in the provision of property and corporate facility management services in over 80 countries from more than 300 corporate office locations worldwide.
The Complainant asserts that it manages a real estate portfolio of 4.6 billion square feet worldwide and has a workforce of over 82,000 employees. LaSalle Investment Management, the Complainant’s investment management business, is one of the world’s largest and most diverse enterprises in real estate with USD 58.1 billion of assets under management and which in 2017 reported annual fee revenues of USD 6.7 billion with gross revenues of USD 7.9 billion.
The Complainant asserts that it has acquired a global goodwill in the use of the JLL service mark through business, Internet presence through its websites and marketing including the use of social media on Facebook, Twitter and Google+ pages. According to Similarweb.com, the Complainant’s websites at its primary domain names <jll.com> and <joneslanglasalle.com> have received 740,530 and 98,980 visitors in the past 6 months respectively. Additionally, Alexa gives <jll.com> a global rank of 40,144 and a rank of 14,098 in the United States while <joneslanglasalle.com> has a global rank of 186,855 and a rank of 105,174 in the United States. The Complainant’s Twitter page has over 69,500 followers while its Facebook page has over 104,000 “likes”, evidence of which has been adduced in screenshots annexed to the Complaint. The Complainant has also provided evidence of numerous awards received by the Complainant as reported in the media in the years 2015, 2016 and 2017.
The Complainant submits that the disputed domain name is identical or confusingly similar to its JLL service mark as it incorporates the JLL trademark in its entirety while merely adding the geographically descriptive term “usa”, which is a reference to the United States of America in combination with a hyphen and the gTLD “.com” extension.
The Complainant submits that numerous panels established under the Policy have decided that the mere addition of geographical terms to a complainant’s trademark does not sufficiently differentiate the disputed domain name from that trademark and this is reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The Complainant argues that the addition of the geographically descriptive term “usa” serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark because this specific geographical term is closely linked and associated with the Complainant. The Complainant’s headquarters is located in Chicago, Illinois, United States and the Complainant has numerous offices located in the United States. By adding the term “usa” to the Complainant’s trademark to form the disputed domain name, the Respondent seeks to create the false impression that the disputed domain name is somehow connected to the Complainant, its trademark and brand.
The Complainant adds that the hyphen in the disputed domain name should be disregarded for purposes of making this determination, referring to the decision in Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (Holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”).
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name as the above-listed trademark registrations establish the Complainant’s exclusive right to use the JLL trademark in commerce on or in connection with the specified services.
The Complainant argues that the Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests as the pertinent WhoIs information identifies the Respondent as “John Micheal / Kenny Kay”.
The Complainant refers to a screenshot of the webpage to which the disputed domain name resolves which is a blank page and lacking content and submits that this evinces the Respondent’s lack of rights or legitimate interests in the disputed domain name, as has been held by numerous panels established under the Policy including Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740 (“Parking” a domain name which then points to its registrar’s Web site services does not constitute a bona fide offer of goods or services as required by the Policy, paragraph 4(c)(i)).
The disputed domain name was registered on April 4, 2018, which is significantly after the Complainant applied for the above-listed registrations of its JLL service mark and also significantly after the Complainant’s first use in commerce of its trademark on March 4, 2014.
Arguing that the disputed domain name was registered and is being used in bad faith, the Complainant submits that at the time of registration of the disputed domain name, the Respondent knew of the existence of the Complainant’s trademarks. By registering the domain name that incorporates the Complainant’s JLL trademark in its entirety and adding “usa” and a hyphen in front of the trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of, and familiarity with, the Complainant’s brand and business. In light of the facts set out above, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered. Because the disputed domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith” as described by the panel in similar circumstances in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. Furthermore because the disputed domain name is a combination of the Complainant’s JLL trademark in its entirety, the closely associated term “usa”, and a hyphen, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks” as was found by the panel in the similar case Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Complainant furthermore provides screenshots of results of searches across a number of Internet search engines for “usa-jll” which return multiple links referencing the Complainant and its business and the Complainant argues that “given the Complainant’s worldwide reputation and presence on the Internet, the Respondent was or should have been aware of the Complainants’ service marks prior to registering the disputed domain name, citing the decision of the panel in Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517.
The disputed domain name resolves to an inactive site. Past panels established under the Policy have held that passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to the Policy, paragraph 4(a)(iii). See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).
The Complainant argues that as there is no plausible good-faith reason or logic for the Respondent to register the disputed domain name, if follows that the disputed domain name was registered in bad faith to cause confusion among Internet users as to the source of the disputed domain name. Considering these circumstances, any use of the disputed domain name whatsoever, whether actual or theoretical must be in bad faith.
The Complainant submits that in addition to the disputed domain name, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses establishing a pattern of such conduct and bad faith registration and use namely:
- <us-bdbiosciences.com> (Becton, Dickinson and Company – BD)
- <us-ericsson.com> (Telefonaktiebolaget L M Ericsson – ERICSSON)
- <us-hoganlovells.com> (Hogan Lovells International LLP – HOGAN LOVELLS)
- <us-skf.com> (Aktiebolaget SKF – SKF)
The Complainant argues that this portfolio of domain names held by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is also evidence of bad faith registration and use of the disputed domain name as described in the WIPO Overview 3.0, section 3.1.2 (A pattern of abuse or a conduct of preventing a trademark holder from reflecting its mark in a domain name is found where “the Respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners”).
The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding and past panels have held that failure to respond to a cease and desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”); also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish 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.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the JLL service mark through its ownership of the above-listed service mark registrations and the significant reputation and goodwill that it has established through the use of the JLL mark in the provision of, and marketing of, its services in numerous jurisdictions and on the Internet.
Having compared both, this Panel finds that the disputed domain name <usa-jll.com> is confusingly similar to the Complainant’s JLL service mark. The disputed domain name consists of the Complainant’s mark in its entirety in combination with the geographical term “USA”, a hyphen and the gTLD extension “.com”.
The Complainant’s JLL mark is the dominant and only distinctive element in the disputed domain name, isolated as it is by the hypen in front of it and the gTLD extension which follows it. The hypen and the gTLD extension may in the circumstances of this case be ignored for the purposes of comparison as argued by the Complainant. Additionally the geographic term “USA” does not reduce the confusingly similar character of the disputed domain name taken as a whole.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name arguing that the Respondent’s name does not resemble the disputed domain name in any way; that there is no evidence of any use of the disputed domain name whether in commerce or otherwise; and that the Respondent has no right to use the disputed domain name because of its confusing similarity to the Complainant’s registered service marks.
It is well established that in such circumstances, the burden of production shifts to the Respondent. The Respondent failed to file a Response and has therefore failed to discharge the burden of production.
This Panel finds therefore that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Having considered the evidence and the submissions of the Complainant this Panel finds that on the balance of probabilities the registrant of the disputed domain name was aware of the Complainant, its name, its service mark and its reputation when the disputed domain name was chosen and registered. There is no plausible explanation as to why the disputed domain name, which fully incorporates the Complainant’s service mark in its entirety, might have been chosen and registered, except to take predatory advantage of the Complainant’s rights, interests and goodwill in the JLL mark.
The Respondent is now passively holding the disputed domain name without having any rights or legitimate interests in it and in circumstances where any use of the disputed domain name is likely to interfere with the Complainant’s registered service mark rights and rights in the JLL mark at common law. This Panel accepts the Complainant’s submissions that the passive holding of this disputed domain name by the Respondent is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(a)(iii). See Telstra Corporation Limited v. Nuclear Marshmallows, supra.
In these circumstances this Panel finds that the disputed domain name was registered and is being used in bad faith. In reaching this conclusion this Panel is fortified in the knowledge that the Respondent has failed to deny the Complainant’s allegations that the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses establishing a pattern of such conduct and bad faith registration.
The Complainant has therefore succeeded in the third element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in the Complaint.
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 <usa-jll.com> be transferred to the Complainant.
James Bridgeman SC
Date: July 27, 2018