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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Lynda Harring

Case No. DCO2018-0012

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 Lynda Harring of Scarborough, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <amjll.com.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 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 April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.

The Center appointed Alistair Payne as the sole panelist in this matter on June 4, 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 the trade mark owner for Jones Lang La Salle, an international professional services and investment management firm that specializes in real estate and operates in 80 countries worldwide. The Complainant owns numerous trade mark registrations for its JLL mark across various jurisdictions and in particular owns Canadian trade mark registration number TMA875711 for JLL, registered on April 15, 2014 and United States trade mark registration number 4564654 for JLL, registered on July 8, 2014. The Complainant also owns a range of domain names through which it operates websites for its business, including <jll.com> and <joneslanglasalle.com>.

The disputed domain name was registered on March 1, 2018 and resolves to a blank page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered rights in its JLL trade mark as set out above. It says that the disputed domain name incorporates the JLL mark in its entirety and adds the geographically descriptive abbreviation “am”, meaning “Americas”, which does not distinguish the disputed domain name and as a consequence it is confusingly similar to the JLL trade mark. The Complainant submits that the use of the “am” term only increases the degree of confusing similarity between the disputed domain name and the Complainant’s trade mark in circumstances that it is closely linked to the Complainant in that the Complainant’s email address for its United States-based employees is “am.jll.com”. The Complainant asserts that the Respondent has in this manner sought to create the impression that the disputed domain name is connected to the Complainant and its trade mark and brand.

The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way. It says that the Respondent is not commonly known by the disputed domain name and that the Complainant has not licensed, authorised, or permitted the Respondent to register domain names that incorporate the Complainant’s trade mark. The Complainant notes that the registrant of the disputed domain name is “Lynda Harring” and that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The Complainant further says that the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. By failing any attempt to demonstrate a use of the disputed domain name and the website to which it resolves, the Complainant says that the Respondent evinces a lack of rights or legitimate interests in the disputed domain name. The Complainant also notes that the Respondent registered the disputed domain name on March 1, 2018, which is significantly after the Complainant’s registration of its JLL mark with the offices noted above and also after the Complainant registered its domain name <jll.com> on November 20, 1998.

The Complainant says that its business and JLL mark are known internationally as a consequence of it being an industry leader in property and corporate facility management services with a portfolio of 4.4 billion square feet worldwide, a workforce of more than 70,000 employees in 80 countries and from 280 corporate office locations. The Complainant notes that it has USD 60.1 billion of assets under management and is a publicly traded corporation that in 2016 reported annual fee revenue of USD 5.8 billion with gross revenues of USD 6.8 billion. The Complainant also notes that its business has won numerous awards, has achieved Fortune 500 status and was recognised by Fortune Magazine in 2017 as one of the “World’s Most Admired Companies” for the second time. The Complainant notes also that its primary websites at <jll.com> and <joneslanglasalle.com> have received 916,670 and 216,980 visitors respectively in the last 6 months.

Considering the degree of renown attaching to the Complainant’s business, the Complainant says that the Respondent knew of or should have known of the Complainant’s trade marks and also notes that performing searches across a number of Internet search engines for “am jll” returns multiple links referencing the Complainant and its business. In addition, the Complainant notes that the disputed domain name resolves to an inactive site that is not being used and submits that such passive use, in all the circumstances, amounts to use in bad faith. It further says that in circumstances that the disputed domain name wholly incorporates the Complainant’s trade mark while adding the geographically descriptive abbreviation “am” to refer to the Americas, that there can be no plausible reason for the Respondent’s registration and that it can only be taken that the Respondent intended the disputed domain name to cause confusion among Internet users as to its source and therefore must be considered to have been registered and used in bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant also notes that the Respondent has failed to respond to the cease and desist letter sent by the Complainant on March 29,2018 and that this should be considered as a further indication of the Respondent’s bad faith in its registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its JLL mark, in particular, Canadian trade mark registration number TMA875711 for JLL registered on April 15, 2014 and United States trade mark registration number 4564654 for JLL registered on July 8, 2014.

The disputed domain name wholly contains the JLL mark with the addition of the abbreviation “am” before the mark and the “.com.co” notation after it and prior to the Top-Level Domain root. The Complainant submits that “am” is in fact an abbreviation for “the Americas” and that it is used in this sense in its standard email address for United States employees being “@am.jll.com”. The inclusion of “.com” before the Top-Level Domain “.co” is obviously an allusion to the “.com” domain name space.

In circumstances that the Complainant’s JLL mark is wholly incorporated into the disputed domain name, there is a strong presumption of confusing similarity (consistent with past UDRP panels’ findings as summarized at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), unless the additional elements serve in practice to distinguish the disputed domain name. In the Panel’s view the “am” abbreviation (and whether it refers to morning time or to the Americas) does not on its own distinguish the disputed domain name, nor does the addition of “.com.co”. For these reasons the Panel finds that the disputed domain name is for the purposes of the first element of the Policy, confusingly similar to the Complainant’s JLL mark.

As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s JLL registered trade mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not sponsored by or affiliated with the Complainant and has not licensed, or authorised, or permitted the Respondent to register domain names that incorporate the Complainant’s trade mark. The Complainant has also asserted that the registrant of the disputed domain name is “Lynda Harring” and that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name.

The Complainant registered the disputed domain name on March 1, 2018, which is significantly after the Complainant’s registration of its JLL mark as noted above and also many years after the Complainant’s registration of its domain name <jll.com> on November 20, 1998. Considering the very significant degree of renown attaching to the Complainant’s business and marks in North America, its developed Internet presence at its main website “www.jll.com” and its various trade mark and other domain name registrations that incorporate the JLL mark, it is reasonable to infer that the Respondent was aware of the Complainant’s business and of the JLL mark upon registration of the disputed domain name in March 2018. The Panel notes that the disputed domain name resolves to a blank page and there is no evidence on the record that the Respondent has used the disputed domain name, or is known by it. Had this been the case or had the Respondent had a plausible explanation for its registration of the disputed domain name, then the Respondent could have responded to the Complainant’s pre-action cease and desist letter, or defended this proceeding, but it has obviously chosen not to do so.

In these circumstances that Panel draws the inference that the Respondent is not known by the disputed domain name or by the trade mark JLL and that it registered the disputed domain with knowledge of the Complainant and for the Respondent’s own purposes and does not appear to be engaged in legitimate or bona fide conduct. The Respondent has failed to provide any evidence to rebut this inference and as a result the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

As set out under section B above, in view of the Internet presence and very substantial degree of renown enjoyed by the Complainant’s business and the JLL mark, in North America and elsewhere, by the date of registration of the disputed domain name, the Panel infers that the Respondent must have been aware of the Complainant’s business and JLL mark by that date. In addition, many Internet users who are familiar with the email addresses used by the Complainant’s United States-based business are likely to associate the “am” abbreviation in the disputed domain name as being an abbreviation for “the Americas”, which heightens the association with the Complainant’s standard United States business email address.

The disputed domain name has resolved to a blank page since its registration on March 1, 2018, and there is no evidence that it has been used in any other way. This appears to amount to a passive holding of the disputed domain name as there is no indication on the record of any particular use by the Respondent. Past UDRP panels have considered a number of factors when determining whether a holding is passive.

As noted at section 3.3 of the WIPO Overview 3.0, the factors that have been considered to be relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

The Panel notes that in this case the Complainant’s JLL mark and business has a very high level of renown. Further, the Respondent has failed to respond either to the Complainant’s cease and desist letter or to the Complaint. While there is no indication that that the Respondent has concealed its identity, in view of its lack of response and the fact that the disputed domain name is conceived using the same “am” plus “jll.com” formula, as is used in the Complainant’s United States email address system, the Panel infers that a potential good faith use is unlikely, if not implausible. In all of these circumstances and particularly because of the very substantial degree of renown attaching to the Complainant’s JLL mark, the Panel is prepared to infer that the Respondent’s use amounts to a passive holding in bad faith under the Policy.

Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith and the Complaint also succeeds under this element of the Policy.

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 <amjll.com.co> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: June 12, 2018

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