WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. Virginia Wheeler
Case No. D2018-1269
1. The Parties
The Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America (“USA” or “United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Virginia Wheeler of Kissimmee, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name <ir-jll.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2018. On June 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2018.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on July 11, 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 a large international professional services company in the field of investment management, particularly with regard to real property. According to the Complaint the Complainant and its affiliates have more than 82,000 employees in more than 80 countries. Since 2014 the Complainant has officially marketed itself as JLL.
The Complainant holds a number of trademarks around the world from which it identifies the following four as being particularly relevant to the case at hand:
United States Trademark No. 4564654, registered on July 8, 2014, in class 35, 36, 37, 42, for JLL;
United States Trademark No. 4709457, registered on March 24, 2015, in classes 36, 37, 42, for JLL;
Canadian Trademark No. TMA875711, registered on April 15, 2014, in classes 35, 36, 37, 42, for JLL;
European Union Trademark No. 010603447, registered on August 31, 2012, in classes 36, 37, 42, for JJL.
The Complainant is active on the Internet with primary domain names <jll.com> and <joneslanglasalle.com>.
The Complainant submits evidence that it sent at least two demand letters to the effect that the Respondent cease and desist from using the disputed domain name, but received no reply.
Little is known of the Respondent who has not participated in this proceeding.
The disputed domain name was registered by the Respondent on March 16, 2018 and resolves to an inactive website.
5. Parties’ Contentions
The Complainant asserts that its JLL trade and service mark is very well-known, recognized and respected worldwide, and that the Respondent can only be making improper and bad faith use of it. The Complainant also points out, and provides evidence, that Internet searches of the words comprising the disputed domain name return multiple links referencing the Complainant and its business.
More specifically, the Complainant asserts that the disputed domain name’s prefix of “ir” stands for “investor relations” and therefore does not diminish, and likely augments, the confusing similarity with its trademark of JLL, as investment advice and relations are a key component of the Complainant’s business. The Complainant further points out that it has in no manner licensed or given permission to the Respondent to make use of its trademarks, and that there is no evidence that the Respondent’s name is that of the disputed domain name.
The Complainant submits that it is evident, in these circumstances that the disputed domain name can only have been both registered and used in bad faith, albeit the “use” complained of is largely passive use.
Thereupon the Complainant requests that the disputed domain name be transferred to it.
The Complainant’s contentions and factual assertions are referenced further as appropriate in the Discussion and Findings, below.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name contains the entirety of the Complainant’s JLL trademark, preceded by “ir-“.
The Complainant points out that the abbreviation “ir” can, and here does, refer to “investor relations”. In this context the Complainant further points out that, not only is investor relations an important part of its business, but also that it maintains an “investor relations” page at <ir.jll.com> of its primary website.
It is accepted by UDRP panels that the addition to the Complainant’s trademarks of words or terms that describe or refer to part of the Complainant’s business in the disputed domain name do not diminish the confusing similarity between the disputed domain name and the trademark within the meaning of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8. Such is largely the case here; the abbreviated reference to investor relations followed by a hyphen can, in light of the Complainant’s business and activities, be argued to increase confusing similarity—and it certainly does not materially diminish it.
The Complainant has, accordingly, met the burden of establishing paragraph 4 (a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent in this matter has not answered the Complaint nor replied to demand letters from the Complainant.
UDRP case law and jurisprudence establish that a complainant must demonstrate at least a prima facie case showing that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is established, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See also Meizu Technology Co., Ltd. v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225; WIPO Overview 3.0, section 2.1.
The Complainant clearly and convincingly asserts that it has never licensed or otherwise authorized the Respondent to use its trademarks in the disputed domain name, and that it has no knowledge or belief of any rights or legitimate interests of the Respondent in the disputed domain name. Furthermore, there is no evidence or indicia 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.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the defaulting Respondent; the Complainant has therefore met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The findings above demonstrate that the Respondent has created and registered a domain name that is confusingly similar to the Complainant’s trademarks, and that the Respondent has no discernable right or legitimate interest in the disputed domain name is asserted or to be found. These and several other factors point to bad faith on the part of the Respondent.
The disputed domain name was registered three to five years after the Complainant’s trademark registrations and four years after it had embarked on a significant promotion of its JLL trademark; that trademark is, furthermore, an abbreviation of the Complainant’s full name, which is well-known in the business and real property investment world. It is not plausible that the Respondent’s choice and registration of the disputed domain name occurred by serendipity, rather all factors point strongly to bad faith registration.
As to bad faith use it should be noted that there is here no allegation of actual use of the disputed domain name in commerce. The disputed domain name has resolved to an inactive site. The Complainant, however, argues that this is an appropriate case for the application of the “passive holding” doctrine established by Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and its progeny. It is indeed, on the facts above, difficult or impossible to find a good faith explanation of how the Respondent might use the disputed domain name. Rather the totality of the circumstances here, including the failure of the Respondent to reply to cease-and-desist letters, permits the Panel to conclude that there is bad faith “use”, albeit inactive, within the meaning of the Policy. See WIPO Overview 3.0, section 3.3, and cases cited therein.
It follows that the Complainant has met the burden of finding bad faith registration and use pursuant to paragraph 4 (a)(iii) of the Policy.
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 <ir-jll.com> be transferred to the Complainant.
Date: July 18, 2018