WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Registration Private, Domains By Proxy, LLC / Pam Ella
Case No. D2021-3791
1. The Parties
Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB , Sweden.
Respondent is Registration Private, Domains By Proxy, LLC, Unites States / Pam Ella, United States.
2. The Domain Name and Registrar
The disputed domain name <ap-jill.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 November 12, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 Complainant on November 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on November 19, 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on December 16, 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
Complainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated, which, together with its consolidated subsidiaries, comprise the JLL group, a professional services and investment management firm in the real estate industry. Complainant was formed through a merger of other entities in 1999 and has marketed itself under the name “JLL” since 2014. The JLL group, which reported revenue of USD 6.1 billion in 2020, maintains a global footprint of over 5 billion square feet of property and corporate facility management space, has approximately 91,000 global employees, has over 300 office locations globally, and serves 80 countries.
Complainant owns numerous trademark registrations in the United States and internationally, examples of which are:
- JLL, Singapore Reg. No. T1203967D, registered on October 22, 2013, in Classes 37, 37, and 42;
- JLL, China Reg. No. 10453827, registered on May 28, 2013 in Class 42;
- JLL, Australia Reg. No. 1471865, registered on November 12, 2012, in Classes 36, 37, 42;
- JLL, United States Reg. No. 4564654, registered on July 8, 2014, in Class 35;
- JONES LANG LASALLE (JLL), Singapore Reg. No. T1210494C, registered on October 31, 2013, in Classes 35, 36, 37, and 42;
- JONES LANG LASALLE (JLL), China Reg. No. 11231728, registered on March 28, 2014, in Class 42;
- JONES LANG LASALLE (JLL), Australia Reg. No. 1502804, registered on March 4, 2013, in Classes 35, 36, 37, and 42;
- JONES LANG LASALLE, United States Reg. No. 2593380, registered on July 16, 2002, in Classes 36 and 37.
Complainant owns domain names that incorporate the JLL trademarks, including <jll.com> and <joneslanglasalle.com>, which function as its primary websites, and also operates the “.jll” and “.lasalle” new generic Top-Level Domains (“gTLDs”). Complainant also uses the <ap.jll.com> subdomain for email services for employees located in the Asia-Pacific region.
The disputed domain name was registered on July 15, 2021. Prior to completion of a takedown, the disputed domain name had resolved to a pay-per-click (“PPC”) website and was used for email.
5. Parties’ Contentions
Complainant asserts that its rights in the JLL trademark are established through its numerous trademark registrations marks for or containing the term “JLL”. Complainant contends that it thus has standing to file a UDRP based on these established trademark rights. According to Complainant, the disputed domain name is confusingly similar to Complainant’s trademarks because the disputed domain name contains the JLL trademark in its entirety, with the addition of a single character “i” between the “j” and the first “l”. Complainant further contends that an additional element of the disputed domain name, the term “ap”, is a geographic term commonly used as an abbreviation for the Asia-Pacific region. Complainant states that it uses a subdomain, <ap.jll.com>, and that the disputed domain name replaces the period between “ap” and “jll” with a hyphen, resulting in additional confusing similarity.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant and is not authorized by Complainant to use the JLL trademark in a domain name or any other context. Complainant asserts that Respondent’s name, “Pam Ella”, does not resemble the disputed domain name in any manner, and there is no evidence that Respondent is commonly known by the disputed domain name or that Respondent has any legitimate business interest in the disputed domain name. Complainant describes Respondent’s use of the disputed domain name to send emails which have the appearance of coming from Complainant and which request payment of invoices to updated bank details, fraudulent activity commonly known as phishing. Complainant also states that Respondent used the disputed domain name to host a PPC link site, which does not represent a bona fide offering of goods and services when a complainant’s trademark is used to draw Internet users to a respondent’s site. Finally, Complainant indicates that the disputed domain name was registered well after Complainant’s trademarks were registered and used, as well as many years after Complainant registered its primary <jll.com> domain name.
Complainant asserts that Respondent registered the disputed domain name specifically for the purpose of misleading Internet users, primarily through sending phishing emails from a domain nearly identical to Complainant’s <ap.jll.com> subdomain. Complainant also contends that Respondent’s use of Complainant’s trademark in a domain name that resolved to a PPC site indicates bad faith. Complainant cites Respondent’s use of a privacy service as additional evidence of bad faith registration and use of the disputed domain name. Complainant offers that Respondent must have had knowledge of Complainant’s trademark and that Respondent likely had Complainant’s trademark in mind when registering the disputed domain name. As such, Complainant contends that Respondent registered and used the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default would not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns multiple registrations in the United States for JLL and JLL-formative trademarks. Therefore, Complainant has established that it has rights in the JLL trademark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the JLL trademark in its entirety as the leading element, preceded by the letters “ap” (a descriptive term commonly used as an abbreviation for the Asia-Pacific region) and a hyphen, with the addition of a single “i” between the “j” and the first “l”. Prior UDRP panels have held that the addition of such terms to a domain name containing a trademark does not prevent a finding of confusing similarity between the disputed domain name and the mark. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
Even if “ap” is not understood to mean “Asia-Pacific” (nor for that matter to be a reference to the “ap” subdomain used by the Complainant), the further addition of the letters “ap” does not prevent a finding of confusing similarity. Prior UDRP panels have found that the addition of characters to other terms in a domain name may be considered a form of typosquatting. In this respect, the letter “i”, which was added to the JLL trademark to form part of the disputed domain name, is in close proximity on a keyboard to both the letters “j” and “l”, circumstances that add to the confusing similarity between the disputed domain name and Complainant’s trademark. See Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its JLL trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark 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 trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interest in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not authorized by Complainant to use its trademarks and that Respondent is not affiliated with Complainant in any way. Respondent also does not appear to be using the disputed domain name in connection with any bona fide offering of goods or services, nor does Respondent appear to be making legitimate noncommercial or fair use of the disputed domain name. Complainant has presented evidence that Respondent has used the disputed domain name for email phishing, an illegal activity, in order to mislead Internet users into making payments under fraudulent pretenses. Prior UDRP panels have found that using a domain name for illegal activity that harms consumers, including phishing is not a legitimate business use of the domain name and can never confer rights or legitimate interests upon a respondent. See WIPO Overview 3.0, section 2.13; see also Wikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The registration and use of the disputed domain name was in bad faith. Complainant provided evidence of its registration and widespread use of the JLL trademarks, sufficient to conclude that they were well known prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the JLL trademarks at the time of registration of the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, given the construction of the disputed domain name, the Panel’s finding is reinforced given the Complainant’s use of the “ap” subdomain for email services for employees located in the Asia-Pacific region.
Respondent used the disputed domain name to engage in an email phishing campaign. Respondent sought to trade on the goodwill of Complainant’s JLL trademarks to cause email recipients to believe they had received legitimate emails from Complainant, all for the purpose of Respondent’s financial gain. Prior UDRP panels have found that use of a complainant’s trademark in a disputed domain name for the purpose of a respondent’s financial gain represents bad faith. See Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
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 <ap-jill.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: December 30, 2021