WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Whois Privacy Protection Service by onamae.com / Kunagorn Sirikupt

Case No. D2019-3143

1. The Parties

The Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Kunagorn Sirikupt, Thailand.

2. The Domain Name and Registrar

The disputed domain name <irjll.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 December 24, 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 in English on December 26, 2019.

On December 24, 2019, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on December 26, 2019. The Respondent did not comment on the language of the proceeding.

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 in English and Japanese of the Complaint, and the proceedings commenced on January 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on February 21, 2020. 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, Jones Lang LaSalle IP, Inc., is wholly owned by Jones Lang LaSalle Incorporated and it is forming part of the JLL group which is listed on the New York Stock Exchange under the symbol “JLL”. JLL group is a service and investment management firm specializing in real estate. It has workforce of 90,000 and services clients in over 80 countries from more than 300 corporate office locations worldwide. JLL group also wins numerous awards and accolades.

The Complainant is the owner of various JONES LANG LASALLE (JLL) and JLL trademarks in the world, including the relevant Thailand trademark No. บ61421 JONES LANG LASALLE (JLL) registered on April 22, 2014 in class 36; Thailand trademark No. บ61515 JONES LANG LASALLE (JLL) registered on April 28, 2014 in class 42; Thailand trademark No. บ61518 JONES LANG LASALLE (JLL) registered on April 28, 2014 in class 37; Japanese trademark No. 5552657 JONES LANG LASALLE (JLL) registered on January 25, 2013 in classes 35, 36, 37 and 42; Japanese trademark No. T4439030 JONES LANG LASALLE and Device registered on December 8, 2000 in class 36; United States trademark JLL No. 4564654 registered on July 8, 2014 in classes 35, 36, 37 and 42 and United States trademark JLL and Device No. 4709457 registered on March 24, 2015 in classes 36, 37 and 42.

The Complainant has marketed itself under the name “JLL” since 2014.

The Complainant has used the subdomain <ir.jll.com> since 2013 to provide information about the Complainant and about presentations and events that might interest their investors. The Complainant is the owner of numerous domain names which incorporate the JLL trademark, including <jll.com> registered on November 20, 1998 and <joneslanglasalle.com> registered on December 3, 1998. The JLL group maintains 100 websites globally and had acquired the rights to use the dot-jll (“.jll”) and dot-lasalle (“.lasalle”) top level domain names in 2015.

The Respondent is an individual based in Thailand.

The disputed domain name was registered on August 22, 2019 and does not resolve to a page.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name <irjll.com> is confusingly similar to the Complainant’s JLL trademark. Specifically, the Respondent had created the disputed domain name by adding the term “ir” to the Complainant’s JLL trademark. The Complainant maintains the subdomain <ir.jll.com> since 2013 to provide company financial information to its investors. Given the term “ir” in the disputed domain name is an acronym for “Investor Relations”, it is closely related to and describing the Complainant’s brand. The disputed domain name which merely consists of the Complainant’s JLL trademark and the descriptive term “ir” of the Complainant’s business, is confusing similar to the Complainant’s JLL trademark.

The Complainant also contends that the disputed domain name is a prototypical example of typosquatting because the disputed domain name only varies from the Complainant’s subdomain <ir.jll.com> by a single period. The Complainant alleges that the omission of a full stop does not distinguish the disputed domain name from the Complainant’s subdomain <ir.jll.com> nor diminish the confusing similarity between the disputed domain name, the Complainant’s subdomain <ir.jll.com> and primary domain <jll.com>.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s subdomain <ir.jll.com> in both sight and sounds, and subsequently confusingly similar to the Complainant’s JLL trademark because it incorporates the entirety of the JLL trademark.

No rights or legitimate interests

The Complainant claims that the granting of registration of the JLL trademark is prima facie evidence of the Complainant’s ownership and exclusive right to use the JLL trademark.

The Respondent has no connection with the Complainant or any of its affiliates. Based on the fact that the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark nor given the Respondent permission to use the Complainant’s trademarks and domain names in any manner, the Complainant submits that the Respondent has no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

The Complainant contends that the Respondent is not commonly known by the disputed domain name and it is an evidence of lack of rights or legitimate interests. The WhoIs information identifies the Registrant as “Kunagorn Sirikupt” which does not resemble the disputed domain name, and the use of the privacy service by the Respondent at the time of filing the Complaint equates to lack of rights or legitimate interests.

Based on the inactive status of the disputed domain name, the Complainant claims that the Respondent has failed to make use of the disputed domain name and has not demonstrated any attempt to make legitimate use of the disputed domain name which evinces a lack of rights or legitimate interests in the disputed domain name.

The Respondent registered the disputed domain name on August 22, 2019 which is significantly after the Complainant’s registration of its JLL trademark, the Complainant’s first use of it trademark in 1999 and the Complainant’s registration of its primary domain name <jll.com> on November 20, 1998.

Registered and used in bad faith

The Complainant contends that its JLL trademark is known internationally and it has used the trademark to market and sell goods since March 4, 2014, which is before the Respondent’s registration of the disputed domain name on August 22, 2019.

The Complainant claims that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business because the disputed domain name incorporates the related term “ir” to the beginning of the Complainant’s JLL trademark which is confusing similar to the Complainant’s trademark and domain name <jll.com>, as well as mimicking the subdomain name <ir.jll.com>. The Complainant finds the mark JLL is so closely linked and associated with the Complainant that any minor variation of the mark and use strongly implies bad faith.

The Complainant also relies on the awards achieved by the Complainant and the Internet search results for “ir jll” to demonstrate the Complainant’s fame. The Complainant asserts that the Respondent should have known of the existence of the Complainant’s trademarks at the time of registration of the disputed domain name, and such registration of the disputed domain name containing a well-known trademark constitutes bad faith.

The disputed domain name resolved to an inactive site and the Complainant contends that the passive holding of the disputed domain name constitute a factor in finding bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy.

The Complainant also contends that the disputed domain name is a typosquatted version of the Complainant’s subdomain name <ir.jll.com> and primary domain name <jll.com>, and typosquatting itself is evidence of bad faith registration and use.

The Complainant claims that the disputed domain name which incorporates the Complainant’s JLL trademark in its entirety and simply adds related prefix “ir” is confusingly similar to the Complainant’s JLL trademark and primary domain name <jll.com>, as well as mimicking the Complainant’s subdomain name <ir.jll.com>. The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name and must be considered as having been registered and used in bad faith with no good faith use possible.

The Complainant contends that the use of privacy service by the Respondent to hide its identity at the initial filing of the Complaint is an indication of bad faith.

The Complainant also asserts that the ignorance of the Complainant’s attempts to resolve this dispute by the Respondent may properly considered as a factor of a finding of bad faith registration and use of a domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Language of the Registration Agreement is Japanese.

The Complainant requested the language of the proceeding be in English on the grounds that (i) neither of the Parties appear to speak Japanese, (ii) the Complainant has sent three cease and desist letters in English which the Respondent has never answered nor to state that it does not understand its content, (iii) it would be inefficient if the proceedings were to be held in Japanese, (iv) it would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint to another language, and (v) the disputed domain name is comprised of Latin characters and the term “jll”, which is dominant part of the disputed domain name, does not carry any specific meaning in either the Japanese or Thai languages.

The Respondent did not respond to this request.

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Japanese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Japanese, but none was filed. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2 Substantive issues

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <irjll.com> is confusingly similar to the Complainant’s mark because the disputed domain name incorporates the Complainant’s JLL mark in full, preceded by “ir”. The generic Top-Level Domain (“gTLD”) “.com” should be disregarded under the first element confusing similarity test. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1).

The Complainant points out that the term “ir” is an acronym for “investor relations”, and it has used and maintained the subdomain page at <ir.jll.com> to provide company financial information to its investors. It is accepted by UDRP panels that the addition to the complainant’s trademarks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not affect the confusing similarity of the domain name from the registered trademark under the first element of the Policy. (WIPO Overview 3.0, section 1.8). Therefore, the inclusion of a term “ir” to the Complainant’s trademark does not affect the confusing similarity of the disputed domain name from the Complainant’s JLL trademark.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant, and there is no evidence in the file of this case that would suggest that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. Considering the absence of a response by the Respondent to the Complainant’s contentions, the fact that the Respondent was granted neither the license nor an authorization to make any use of the Complainant’s trademark and the Respondent is not commonly known by the disputed domain name, the Panel finds the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <irjll.com> was registered and is being used in bad faith.

The Panel finds that the Respondent could not have chosen and registered the disputed domain name in good faith without having been aware of the Complainant especially given its reputation and extensive presence worldwide in the real estate industry.

The Complainant’s JLL trademark, <jll.com> primary domain name and <ir.jll.com> subdomain name have been used in commerce for many years. The disputed domain name was registered five years after the Complainant had started using the JLL trademark. Therefore, the Respondent should have knowledge of the Complainant’s trademarks and business. It appears to the Panel that the Respondent has registered the disputed domain name <irjll.com>, which is a misspelling of the Complainant’s subdomain name <ir.jll.com>, in order to create an association with the Complainant as a means of attracting users to its future website.

The fact that the disputed domain name does not resolve to an active page does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). See also Telstra Corporative Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003.

Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s mark in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

7. Decision

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 <irjll.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: March 9, 2020