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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot / DOMAIN ADMINISTRATOR, Domain is For Sale at www.dan.com ----

Case No. D2021-3298

1. The Parties

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

The Respondent is DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot, United States / DOMAIN ADMINISTRATOR, Domain is For Sale at www.dan.com ----, Cayman Islands, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <jlljet.com> (“Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 2021, 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 October 12, 2021, 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 October 21, 2021.

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 October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 15, 2021. 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 wholly-owned subsidiary of Jones Lang LaSalle Incorporated. Jones Lang LaSalle Incorporated and all of its consolidated subsidiaries comprise the JLL group. The JLL group is a professional services and investment management firm specializing in real estate, serving clients in over 80 countries from more than 300 corporate office locations worldwide. The group’s common stock is listed on The New York Stock Exchange under the symbol “JLL”. In 2019, the group reported a revenue of USD 18 billion.

The Complainant is the owner of multiple trade mark registrations for the JLL trade mark including, inter alia, Reg. No. 4564654, registered on July 8, 2014 in the United States; Reg. No. TMA875711, registered on April 15, 2014 in Canada; and Reg. No. 010603447, registered on August 31, 2012 in the European Union. In addition, the Complainant also filed a trade mark application for the mark JLL JET (U.S. serial No. 90657626) on April 20, 2021. The Complainant is also the owner of multiple domain names incorporating the JLL trade mark, including <jll.com>, and acquired the rights to use the “.jll” and “.lasalle” Top-Level Domains (“TLDs”).

The Disputed Domain Name was registered on April 28, 2021. The Disputed Domain Name currently redirects to a page which purports to offer the Disputed Domain Name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is almost identical and confusingly similar to the Complainant’s JLL trade mark as it reproduces the Complainant’s JLL mark in its entirety with the addition of the descriptive term “jet”. The Complainant’s JLL JET product is a web-based mobile application used to facilitate communication. The fact that the descriptive term is closely linked and associated with the Complainant’s products increases the confusing similarity between the Disputed Domain Name and the Complainant’s JLL mark.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its JLL trade mark or register the Disputed Domain Name. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bonafide offering of goods or services. The website to which the Disputed Domain Name resolves does not appear to be an active website; instead, the Disputed Domain Name is being offered for sale at an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the Disputed Domain Name. Therefore, this cannot be considered as a bonafide offering of goods or services.

(c) The Respondent must have been aware of the Complainant and its JLL trade mark at the time of registering the Disputed Domain Name. The use of the Complainant’s JLL trade mark incorporated entirely in the Disputed Domain Name with the addition of a descriptive term “jet” was intentionally designed to cause confusion and mislead Internet users. The Disputed Domain Name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain. Therefore, the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

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

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the JLL trade mark, based on its various above-referenced trade mark registrations.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the TLD (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s JLL trade mark in its entirety with the addition of the descriptive term “jet”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The Panel therefore finds that the mere addition of the suffix “jet” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s JLL trade mark.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s JLL trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel finds that the Complainant has not authorised the Respondent to use the JLL trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the JLL trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Respondent appears to have registered the Disputed Domain Name solely for the purpose of profiting from the Complainant’s reputation and its JLL mark and JLL JET mobile application.

In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

Furthermore, the Panel finds that, given the nature of the Complainant’s business and the fact that the Complainant operates a web-based mobile application named JLL JET as part of its business operations, the nature of the disputed domain name, comprising the Complainant’s JLL trademark with the addition of the term “jet”, cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.

After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that its JLL trade mark appears to be very well-known globally. Therefore, taking this into consideration together with the fact that the Disputed Domain Name incorporates the Complainant’s JLL trade mark in its entirety with the addition of the descriptive term “jet” which resembles a mobile application product already introduced by the Complainant, and that the website to which the Disputed Domain Name resolves is being offered for sale at a disproportionately high price, the Respondent must have been aware of the Complainant and its rights in the JLL trade mark when registering the Disputed Domain Name.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name. A cease-and-desist letter was also previously sent by the Complainant to the Respondent and the Complainant’s demands were ignored by the Respondent. Past Panels have held that the 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 v. Zuccarini, WIPO Case No. D2000-0330); and

(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains the Complainant’s well-known JLL mark in its entirety (with the addition of the descriptive term “jet” that relates to a product and pending trade mark application of the Complainant). The Respondent is using the Disputed Domain Name to redirect Internet users to a “for sale” page, and the Respondent has not demonstrated any attempt to make legitimate use of the Disputed Domain Name and the website to which it resolves, which evidences a lack of rights or legitimate interests in the Disputed Domain Name, as confirmed by past UDRP panels (see Washington Mutual, Inc., v. Ashley Khong, WIPO Case No. D2005-0740). Past UDRP panels have also consistently upheld the view that when a domain name that is confusing similar to a complainant’s well-known trademark is being offered for sale in an amount far exceeding the respondent’s out-of-pocket expenses in registering the domain name, this may amount to further evidence of the respondent’s bad faith (see Spirig Pharma AG v. Whois privacy services, provided by DomainProtect / Alexander Zinovjev, WIPO Case No. D2014-1612).

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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 <jlljet.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: December 29, 2021

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