WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Stephanie Cavoto, 20/20 Foresight Services
Case No. D2019-0521
1. The Parties
The Complainant is Jones Lang LaSalle IP, Inc.(“JLL”) of Chicago, Illinois, United States of America (“USA”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Stephanie Cavoto (“Ms. Cavoto”), 20/20 Foresight Services of Chicago, Illinois, USA.
2. The Domain Name and Registrar
The disputed domain name <jll-hr.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2019. On March 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2019, 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 the Complainant on March 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 13, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 18, 2019. 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
JLL, headquartered in Chicago, Illinois, USA is a well known professional services and investment managing firm specializing in real estate. It was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999, the largest international merger in the real estate industry at that time. Since 2014 JLL has officially marketed itself as “JLL”.
JLL has a portfolio of 4.6 billion square feet worldwide, a workforce of over 82,000 employees, serving clients in over 80 countries from more than 300 corporate offices worldwide. Its investment management business, LaSalle Investment Management has $58.1 billion of assets under management. JLL is publically traded (NYSE: JLL). In 2017 JLL reported annual fee revenues of $6.7 billion with gross revenues of $7.9 billion. See its Annual Report, Annex 6 to the Complaint.
JLL is the winner of numerous awards and accolades (Pages 4-5 of the Complaint). JLL owns registered trademarks for JLL in the USA (Reg No. 4564654, registered on July 8, 2014 for Classes 35, 36, 37, and 42; and Reg No. 4709457, March 24, 2015 for Classes 36, 37, and 42) as well as in Canada and the European Union for similar classes.
JLL has a large Internet presence and is the owner of numerous domain names which incorporate its trademark JLL. JLL maintains 100 websites globally and in 2015 acquired the rights to use “.jll” and “.lasale” as top level domain names. “Similarweb.com” lists for website “www.jll.com” some 828,000 visitors for August 2018‑January 2019; and for “www.joneslangsalle.com” for the same time period 213,210 visitors. Alexa gives <jll.com> a global rank of 43,406 and a USA rank of 12,454. JLL’s Twitter page has a following of 75,100 followers, its Facebook page with “likes” of 131,000, and its LinkedIn page 729,000 followers. See Annex 10 to the Complaint.
The Disputed Domain Name is registered on August 7, 2018. The Disputed Domain Name does not resolve to an active website.
Ms. Cavoto has not responded to the Complaint and continues to maintain the domain name <jll-hr.com>.
5. Parties’ Contentions
The Disputed Domain Name is Confusingly Similar to JLL’s Trademarks.
As set forth above JLL’s brand is well known and respected worldwide and in its industry. JLL has made significant investments to advertise and promote its Registered Marks for years in media and the Internet. As a result of its registrations JLL prima facie satisfies the threshold requirements for having trademark rights for purposes of standing to file this UDRP case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
When comparing <jll-hr.com> to JLL’s trademarks terms such as “.com” do not affect the domain name for a determination of whether it is identical or confusingly similar. Rollerblade, Inc v. McCrady, WIPO Case No. D2000-0429.
The addition by Ms. Cavoto of a hyphen and the generic term “hr”, has simply made the use more confusingly similar and making the term closely linked with JLL’s well know trademark. “hr” is a common abbreviation for “human resources”. JLL has a workforce of over 82,000 people all subject to its human resources department. A search of the term “jll hr” on the Internet produces results relating to JLL and its business. See Annex to the Complaint. Adding a term like “hr” to the name further enhances confusion. Inter IKEA Systems B.V. v. Franklin Lavall?e /Ikea Cuisine.net, WIPO Case No. D2015-2042 (Dec 22, 2015). See WIPO Overview 3.0 at section 1.8.
Ms. Cavoto has No Rights or Legitimate Interests in The Disputed Domain Name.
JLL has significant trademark rights in the USA, Canada and the European Union and is recognized worldwide in connection with the goods and services identified in its trademark registrations. Ms. Cavoto is not sponsored or affiliated with JLL in any way. Ms. Cavoto is not commonly known by the Disputed Domain Name. Ms. Cavoto has no registered marks with the USPTO nor any other indication that Ms. Cavoto has any rights to use the mark JLL. There is no evidence indicating anywhere that Ms. Cavoto has any acquired right or legitimate interest in the Disputed Domain Name.
Ms. Cavoto is using the Disputed Domain Name to redirect Internet users to a website that resolves to a blank page and lacks content. Ms. Cavoto has failed to make use of the Disputed Domain Name’s website and has not demonstrated any attempt to make any legitimate interest or active use of the Disputed Domain Name. Ms. Cavoto registered the Disputed Domain Name on August 7, 2018, at least four years after the registration and use in commerce by JLL of its JLL trademark.
The Disputed Domain Name was Registered and Being Used in Bad Faith
At the time of registering the Disputed Domain Name Ms. Cavoto knew or should have known of the existence of JLL’s rights and filing a registration for a domain name on such rights can only be a bad faith use. Ms. Cavoto offers executive search services, including compensation studies, industry surveys, planning, hiring, assessment and expert witnesses, to real estate, construction services, financial services, and other service sectors. By working in the real estate industry Ms. Cavoto cannot deny her knowledge of JLL and its services, businesses and trademarks. JLL has achieved Fortune 500 status since 2015 and has been recognized by Fortune as “one of the World’s Most Admired Companies” in 2019 for the fourth consecutive year. JLL’s worldwide reputation and presence on the Internet means Ms. Cavoto should have known or was aware of JLL’s trademarks prior to filing for the Disputed Domain Name.
Even though the Disputed Domain Name resolves to an inactive website, it does not prevent a finding of bad faith, as bad faith does not require a positive act by Ms. Cavoto. Holding passively a domain name can constitute bad faith and, here, the Disputed Domain Name being confusingly similar to the trademark JLL, bad faith must be considered. DCI S.A. v Link Commercial Corporation, WIPO Case No. D2000-1232 (Decmber 7, 2000) where it was found and held that a passive holding of a domain name satisfies the requirements of Section 4(a)(iii) of WIPO Policy.
The Disputed Domain Name can only be taken as intending to cause confusion to Internet users as to the source of the Disputed Domain Name, particularly where there is no good faith use possible. MX records have been set up on the domain, which permits the sending and receiving of emails to and from the domain. There is no plausible reason to allow such activity here. Such actions are indicative of holding the domain name for “such future active use in a way which would be competitive with or otherwise detrimental to” JLL. Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (August 3, 2000). It is not possible to conceive plausible, actual or contemplated active use of the Disputed Domain Name by Ms. Cavoto that would not be illegitimate. Telstra Corp. Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
In addition, Ms. Cavoto has ignored JLL’s attempts to resolve this dispute outside this proceeding. 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. Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (June 7, 2000). Annex 13 sets forth the cease and desist letters sent to Ms. Cavoto via the Registrar.
It must be seen as more likely than not that the JLL trademark rights have been targeted and that Ms. Cavoto’s bad faith registration and use has taken place here. Tudor Games, Inc v. Domain Hostmaster, Customer ID Number 09382953107339 dba Whois Privacy Services Pty Ltd./ Domain Administrator, Vertical Axis, Inc., WIPO Case No. D2014-1754 (January 12, 2014).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds that the Disputed Domain Name is confusing similar with the Complainant’s registered trademark JLL. Further, Ms. Cavoto had no legitimate rights or interest in the Disputed domain and, indeed, registered and used the Disputed Domain in bad faith. With no filing by Ms. Cavoto this Panel finds the presentation of JLL to be fully supportable on all the facts and issues raised.
A. Identical or Confusingly Similar
The Policy for determining confusingly similar acts by Ms. Cavoto is governed by Policy, paragraph 4(a)(i) and Rules, paragraphs 3(b)(viii), 3(b)(ix)(1). As set forth above, the Complainant owns registered trademarks for JLL. The Panel notes that the Disputed Domain Name incorporates the trademark JLL in its entirety; the addition of a hyphen and the term “hr” would not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8); and the generic Top-Level Domain “.com” can be disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1). The registrations for the JLL Trademarks are substantially the same and more correctly, identical but for the generic usage of “-hr”. In the business of JLL as well as the activity, as little as exists, by Ms. Cavoto, clearly “hr” would typically mean “human resources”. No other indication is given by Ms. Cavoto in any context.
This is a taking pure and simple of a well recognized trademark which covers not only the world but the area in which Ms. Cavoto does business, in the same city as the headquarters of JLL.
The Panel finds that the Disputed Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
This requirement is governed by the Policy, paragraph 4(a)(ii), 4(c) and Rules, paragraph 3(b)(ix)(2). There must be a showing by evidence from the Parties that Ms. Cavoto has rights or legitimate interests in the Disputed Domain Name. Ms. Cavoto has defaulted and thus has presented nothing to this Panel. JLL, on the other hand as is their burden to prove, has set forth substantial arguments and proofs indicating Ms. Cavoto has no relationship to the recognized trademark rights of JLL. Ms. Cavoto is not known for any legitimate use of the domain name or the trademarks associated with JLL. Ms. Cavoto’s rights lie within a vacuum where absolutely nothing can be shown to say Ms. Cavoto has done any business or activity to contradict the expansive and worldwide usage and industry wide third party knowledge of JLL’s rights, interests and trademarks. Accordingly, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and it is not rebutted by the Respondent.
Filing the Disputed Domain Name does nothing more, without more, than create the issues to be presented here. Ms. Cavoto appears to be a usurper in the backyard of JLL attempting or planning something that by all accounts would be tortious and otherwise illegal conduct.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy therefore are fulfilled.
C. Registered and Used in Bad Faith
The Policy to determine registration and use in bad faith is governed by Policy, paragraph 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3). The burden of proof rests with JLL. No good faith reasons to counteract the presentations by JLL have been provided. Presentations by JLL show: (1) JLL is a well recognized trademark worldwide; (2) Ms. Cavoto is not known anywhere and only has an inactively used Disputed Domain Name; (3) Ms. Cavoto is in the city of JLL’s headquarters, where JLL expands its use throughout 80 countries worldwide with essentially the same trademark as attempted to be adopted by Ms. Cavoto in the Disputed Domain Name; (4) Ms. Cavoto has ignored the cease and desist letters from JLL; (5) Ms. Cavoto has no use of any website connected to the Disputed Domain Name except resolving to a blank website; (6) Ms. Cavoto’s listed services for her business directly includes real estate, construction and financial services, which could easily be taken as confusing, and intentionally so, from Ms. Cavoto’s lack of activity, with the expansive local and international world of JLL; (7) Ms. Cavoto knew or should have known of this Fortune 500 company JLL prior to filing, and continuing to maintain its Disputed Domain Name; (8) JLL’s searches of the Internet show Ms. Cavoto has no use of any mark, which we have concluded would be confusingly similar to the trademark rights of JLL; (9) Ms. Cavoto registered the Disputed Domain Name in 2018, many years after the JLL trademarks were well recognized in the industry in which JLL was a major participant/contributor and Ms. Cavoto had clear notions of invading; (10) Ms. Cavoto appears to be attempting to warehouse JLL rights for the future, which could only be in bad faith, i.e., competitive with or detrimental to the extensive trademark rights of JLL. Under the standards set by the Policy it is more than likely that Ms. Cavoto targeted illegally the rights of JLL, both when Ms. Cavoto registered the Disputed Domain Name in 2018 and in any potential, illegal planning for use of JLL’s trademark rights. JLL’s burden of proof on bad faith registration and use has been fully met.
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 <jll-hr.com> be transferred to the Complainant.
Maxim H. Waldbaum
Date: May 2, 2019