The Complainant is Jones Lang LaSalle IP, Inc. of Chicago, Illinois, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is George Smith of Key West, Florida, United States.
The disputed domain name <am-jii.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 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 November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default November 28, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 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.
The Complainant is a corporation organized under the laws of Delaware, United States, and headquartered in Chicago, Illinois, United States. It is a subsidiary of Jones Lang LaSalle, Inc. (“JLL”), a publicly traded professional services and investment management firm specializing in real estate. JLL was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999 in what was the largest international merger in the real estate industry at that time. The resulting corporate group has marketed itself as “JLL” since 2014, and “JLL” is its ticker symbol on the New York Stock Exchange. JLL has over 82,000 employees in more than 80 countries, with 2017 gross revenues in excess of USD 7.9 billion. It is a Fortune 500company recognized by Fortunemagazine in 2016 and 2017 as one of the “World’s Most Admired Companies”, among numerous other awards and media mentions cited in the record in this proceeding. The JLL brand is advertised online and in other media, and JLL operates several websites, including “www.jll.com”, as well as a new generic Top-Level Domain (“gTLD”), “.jll”. JLL also has a social media presence with large followings on Facebook, Twitter, and Google+. The Complainant handles the intellectual property portfolio for the JLL group.
The Complainant holds several registered trademarks, including the following:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
JLL |
United States |
4564654 |
July 8, 2014 |
|
JLL |
United States |
4709457 |
March 24, 2015 |
|
JLL |
Canada |
TMA875711 |
April 15, 2014 |
|
JLL |
European Union |
010603447 |
August 8, 2012 |
According to the Registrar, the Domain Name was created on July 25, 2018 and registered in the name of an individual residing in Key West, Florida, United States. The Domain Name does not resolve to an active website at the time of this Decision, nor are there any archived screenshots associated with the Domain Name available through the Internet Archive’s Wayback Machine. Instead, the Domain Name was used within a few hours after registration to send a “phishing” email that falsely appeared to come from a JLL employee inquiring about a rental payment.
The Respondent did not submit a Response or reply to earlier communications including cease-and-desist letters from the Complainant. The Complaint attaches the results of a Reverse WhoIs search showing that the same Respondent, at the same address, is listed as the registrant of several other domain names that appear to be based on trademarks or close approximations of well-known marks: <bakermckeenzie.com> (Baker & McKenzie LLP, BAKER & MCKENZIE), <fede-x.com> (Federal Express Corporation, FEDEX), <nissaan-usa.com> (Nissan Jidosha Kabushiki Kaisha, NISSAN); <panteene.com> (The Proctor & Gamble Company, PANTENE).
The Complainant contends that the Domain Name is confusingly similar to its JLL trademarks, pointing out that the lower-case “i” and “l” characters are visually similar and that “am” is often used as an abbreviation for “America”, denoting a regional office. As the Domain Name has been used only for a fraudulent phishing scheme by someone with no known connection to JLL, the Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name and infers that it was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant indisputably holds JLL trademarks. The Domain Name uses “i” rather than “l” characters, which are visually similar – especially on an incoming email, for example. The Domain Name also adds “am” and a hyphen, which could appear to be a generic geographic indicator. As the Domain Name was used for an email falsely identified as one sent by a JLL property accountant, it is safe to conclude that the Respondent meant precisely for the Domain Name to be confused with the Complainant’s JLL mark. As in most cases, the gTLD “.com” may be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant’s trademarks for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has established a prima facie case by establishing its trademark rights, confusing similarity, the lack of permissive use, and a plainly illegitimate use of the Domain Name for a phishing email. The Respondent has not come forward with any claimed rights or interests.
Accordingly, the Panel finds in favor of the Complainant on the second element of the Policy.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant points to the fraudulent email, which clearly shows that the Respondent was aware of the Complainant’s JLL mark, and cites the “passive holding” doctrine as described in WIPO Overview 3.0, section 3.3, because the Domain Name has not been used for an active website and no legitimate use can be foreseen. In the Panel’s view, the Domain Name has in fact been used, for fraudulent purposes in connection with a phishing email, and that was done within hours of registering the Domain Name. Thus, the Panel readily finds bad faith in the registration and use of the Domain Name. Because of the email, there is no question that the Respondent was aware of the well-known trademark and targeted it for commercial gain. The Respondent did so through an email scam rather than a website, as contemplated in the example given in the Policy, paragraph 4(b)(iv), but those examples are not exclusive, and the form of typosquatting employed by the Respondent, with the substitution of similar-appearing letters (see WIPO Overview 3.0, section 1.9), is more likely to be effective in an email than on a website. Any use of a trademark to perpetrate fraud must still surely reflect bad faith within the meaning of the Policy.
The Panel concludes that the Complainant has established the third element of the Policy, 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 Domain Name, <am-jii.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: December 7, 2018