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 Domain Admin, Epik.com Private Registration of Bellevue, Washington, United States / Brendan Waights, Biracay Ltd of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <jll.properties> (the “Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 2017, 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 July 13, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 18, 2017.
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 July 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2017.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on August 17, 2017. 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 was formed by merger of Jones Lang Wootton and LaSalle Partners in 1999. Since 2014, the Complainant has officially marketed itself under the name “JLL”. The Complainant is a professional services and investment management firm specializing in real estate. It serves clients in over 80 countries from more than 280 corporate office locations worldwide.
The Complainant is the owner of trademark registrations across various jurisdictions including the United States, European Union, Canada, China, Turkey, Switzerland, Mexico and the Philippines. It has therefore spent a considerable amount of time and money protecting its intellectual property rights. The trademarks relevant to this matter are:
|
Trademark |
Jurisdiction |
Registration No. |
Registration Date |
Class |
|
JLL |
United States |
4564654 |
July 8, 2014 |
35, 36, 37, 42 |
|
JLL |
United States |
4709457 |
March 24, 2015 |
36, 37, 42 |
|
JLL |
European Union |
010603447 |
August 31, 2012 |
36, 37, 42 |
|
JLL |
Canada |
TMA875711 |
April 15, 2014 |
35, 36, 37, 42 |
|
JLL |
China |
10453827 |
May 28, 2013 |
42 |
|
JLL |
Turkey |
201273948 |
October 1, 2013 |
35, 36, 37, 42 |
|
JLL |
Switzerland |
629154 |
May 7, 2012 |
36, 37, 42 |
|
JLL |
Mexico |
1295043 |
July 6, 2012 |
42 |
|
JLL |
Philippines |
4-2012-1195 |
August 2, 2012 |
36, 37, 42 |
The Complainant has a large Internet presence and is the owner of numerous domain names which incorporate its trademarks. The Complainant maintains 100 websites globally and in 2015, acquired the rights to use the “.jll” and “.lasalle” Top-Level Domain names. Its primary domain names are <jll.com> and <joneslanglasalle.com>. In addition to its numerous domain names and websites, the Complainant has a strong social media presence through the use of its Facebook, Twitter and Google+ pages.
The Disputed Domain Name was registered on June 2, 2014 (the “Relevant Date”). The Disputed Domain Name resolves to a parking page displaying pay-per-click links and offering the Disputed Domain Name for sale.
The Complainant contends that the Disputed Domain Name is identical to or confusingly similar to its trademark because it wholly incorporates the Complainant’s mark JLL, notwithstanding the addition of the generic Top-Level domain (“gTLD”) “.properties”.
The Complainant contends that the granting of registration of its JLL trademark across various jurisdictions is prima facie evidence of the validity of the term “JLL” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the JLL trademark in commerce or in connection with the goods and/or services specified in the registration certificates.
The Complainant further contends that the Respondent should be considered to have no rights or legitimate interests in the Disputed Domain Name; the Respondent is not commonly known by the Disputed Domain Name, there is no evidence that the Complainant authorized or otherwise permitted the Respondent to register the Disputed Domain Name, and the Complainant’s rights predate the Respondent’s registration. The Respondent is not sponsored by, or in any way affiliated with, the Complainant. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.
The Complainant also contends that the Respondent is intentionally using the Disputed Domain Name to redirect Internet users to a website featuring multiple pay-per-click links to third-party websites for commercial gain. Some of the featured links directly compete with the Complainant’s business. For instance, the website to which the Disputed Domain Name resolves features multiple third-party links for “Property Development” and “Office Services”. The Complainant therefore contends that the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the JLL trademark.
The Complainant also contends that the Disputed Domain Name is being offered for sale in an amount which far exceeds the Respondent’s out-of-pocket expenses in registering the domain name, which serves as further evidence of the Respondent’s lack of rights and legitimate interests.
As to registration and use in bad faith, the Complainant contends that the Respondent’s knowledge of the Complainant’s rights in the mark JLL can be inferred from the facts and this supports a finding of bad faith. It contends that because the JLL trademark is known internationally, with trademark registrations across numerous countries, the Respondent is using the Disputed Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Disputed Domain Name and website. In so doing, the Respondent has created misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name with intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for commercial gain.
The Complainant also contends that the Respondent’s offer for sale of the Disputed Domain Name constitutes evidence of bad faith.
The Complainant also relies on the fact that the true identity of the registrant has been hidden, and the Respondent did not reply to the Complainant’s cease-and-desist letter.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:
(i) That the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That the Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the trademark JLL by virtue of its trademark registrations in various jurisdictions including the United States (where the Respondent is domiciled), the European Union, Canada, China, Turkey, Switzerland, Mexico and the Philippines.
The Panel finds that the Disputed Domain Name is identical to the Complainant’s trademarks. This is because the Complainant’s trademark is entirely subsumed within the Disputed Domain Name. It is well established that the gTLD “.properties” may be disregarded for the purposes of comparison under the first element.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the Disputed Domain Name or a name corresponding to a Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the Disputed Domain Name, even if it had acquired no trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers to or tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent’s use of its trademark and the Respondent is not sponsored or in any way affiliated with the Complainant.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The use of the Disputed Domain Name in connection with a page displaying pay-per-click links that compete with the services of the Complainant, and the listing of the Disputed Domain Name for sale, do not give rise to any rights or legitimate interests in the Disputed Domain Name within the meaning of the Policy.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the Disputed Domain Name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) That the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel is satisfied that the Disputed Domain Name has been registered in bad faith for the following reasons taken cumulatively:
(i) At the time of registering the Disputed Domain Name, the Respondent must have been aware of the Complainant and its rights in the trademark JLL. The evidence shows that this is a very well-known mark that has been in widespread use across various jurisdictions including the United States since 1999 in relation to real estate services. The Respondent’s address is an address located in the United States so the Respondent will have been aware of the existence of the Complainant through extensive use of the Complainant’s trademark in the United States prior to the Relevant Date. The choice of the gTLD “.properties” (which happens to be reflective of the Complainant’s extensive reputation and use in real estate services) is unlikely to have been coincidental.
(ii) The display of pay-per-click links at the website hosted at the Disputed Domain Name referring to the Complainant and its competitors supports an inference that the Respondent knew of the Complainant and its trademark at the Relevant Date.
(iii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” The most cursory trademark or other online search or any online search of existing domain names prior to the Respondent registering the Disputed Domain Name would have instantly revealed the Complainant and its trademark. See in this regard paragraph 3.2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is also satisfied that the Disputed Domain Name has been used in bad faith. By using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s JLL trademark as to the source, sponsorship, affiliation, or endorsement of that website. The Respondent has created a likelihood of confusion as the Complainant’s screenshots show that the trademark JLL was displayed on the website available at the Disputed Domain Name. In the Complainant’s screenshots, the letters “JLL” are displayed as “jll” and “Jll”. Each representation is followed by “.properties” in lowercase. While the Complainant represents the trademark JLL together with a logo and without “.properties:”, the presence of the JLL trademark on the Respondent’s website would nevertheless lead Internet users to believe that the Complainant is the source of the Respondent’s website, and/or the Respondent is sponsored by or affiliated with the Complainant.
The Panel finds that the above likelihood of confusion was created for the purposes of commercial gain, as the website displayed at the Disputed Domain Name contained multiple pay-per-click links to third-party websites, some of which directly compete with the Complainant’s business. The Panel finds this supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The panel also notes that the Disputed Domain Name is being offered for sale or lease on the Epik.com Domain Marketplace. A sale price of $50,000 is advertised (currency unknown). A “for lease” price of $500 per month (currency unknown) is also advertised. Both amounts greatly exceed the Respondent’s out-of-pocket expenses in registering the domain irrespective of currency considerations. The Panel finds the offer for sale further supports a finding of bad faith under paragraph 4(b)(i) of the Policy.
The Panel is also entitled to draw adverse inferences from the Respondent’s failure to respond to the Complaint.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 <jll.properties> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: August 31, 2017