Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Name Redacted.1
The disputed domain names <jllsgp.com> and <talktojll.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. The Center received informal email communications from a third party on July 25, 2019. On the same date, the Center sent the Parties a possible settlement email. Complainant did not request suspension. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2019.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 27, 2019. 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.
Complainant is a company organized under the laws of the United States that is a wholly owned subsidiary of the Jones Lang LaSalle group of companies, also known under the abbreviation “JLL”, which is active in the field of property and corporate facility management services.
Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to the designations “Jones Lang LaSalle” as well as “JLL”, inter alia:
- Word mark JONES LANG LASALLE, Intellectual Property Office of Singapore (IPOS), registration number: T 9906699B, registration date: February 2, 1999, status: active;
- Word mark JLL, IPOS, registration number: T 1202967D, registration date: October 22, 2013, status: active;
- Word mark JONES LANG LASALLE, United States Patent and Trademark Office (USPTO), registration number: 2593380, registration date: July 16, 2002, status: active;
- Word mark JLL, USPTO, registration number: 4564654, registration date: July 8, 2014, status: active;
- Word mark JONES LANG LASALLE, European Union Intellectual Property Office (EUIPO), registration number: 001126382, registration date: June 13, 2000, status: active;
- Word mark JLL, EUIPO, registration number: 010603447, registration date: August 31, 2012, status: active.
Complainant, moreover, has evidenced to own a number of domain names which incorporated the JLL trademark, including <jll.com> which was registered by Complainant back in 1998 and which redirects to Complainant’s official website at “www.jll.com” where Complainant promotes its property and corporate facility management services.
According to the WhoIs information for the disputed domain names, Respondent provided domicile in Singapore with a registered name composed of the company names of both Complainant and its authorized representative and residing under Complainant’s official contact information in Singapore, while Complainant points to the fact that Respondent has nothing to do with Complainant and/or its business. The disputed domain name <jllsgp.com> was first registered on February 4, 2010, while the disputed domain name <talktojll.com> was first registered on May 9, 2019. Complainant has provided evidence that at some point before the filing of this Complaint, the disputed domain names resolved to active websites at “www.jllsgp.com” and “www.talktojll.com” respectively, both of which prominently carried Complainant’s official JLL logo and requested Internet users to enter personal data such as, e.g., email addresses, User IDs and/or passwords.
Complainant requests that the disputed domain names be transferred to Complainant.
Complainant contends that it was formed in 1999 by the largest international merger in the real estate industry at the time; today, the JLL group is an industry leader in property and corporate facility management services with clients in over 80 countries which are being served from more than 300 corporate office locations worldwide. In 2015, the JLL group achieved Fortune 500 status and was recognized by the Fortune Magazine as one of the “World’s Most Admired Companies” in 2019 for the fourth consecutive year.
Complainant submits that the disputed domain names are confusingly similar to Complainant’s JLL trademark, as they both capture the latter in its entirety, simply adding the geographic term “sgp” (being the three-letter country abbreviation for “Singapore”) and the descriptive terms “talk to”, respectively.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent is neither sponsored by or affiliated with Complainant in any way nor has it been given a license, authorization or permission to use Complainant’s JLL trademark in any manner, (2) Respondent is not commonly known by the disputed domain names, but rather falsely used the names and contact information of Complainant as well as Complainant’s authorized representative, (3) Respondent’s making use of both disputed domain names is to fool unsuspecting visitors into divulging their personal information by requesting for their email addresses or login credentials in a fraudulent manner, which neither qualifies as bona fide nor as noncommercial or fair. Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) by creating domain names including Complainant’s JLL trademark and by copying Complainant’s JLL logo and attempting to phish Internet users’ personal information, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brands and business, (2) using the disputed domain names in order to resolve to websites fraudulently posing as Complainant for purposes of launching a phishing attack indicate that Respondent intentionally attempted to pass off the websites as belonging to Complainant as part of Respondent’s phishing scheme, thus demonstrating bad faith registration and use under the Policy.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a response.
The Panel concludes that the disputed domain names <jllsgp.com> and <talktojll.com> are confusingly similar at least to the JLL trademark in which Complainant has rights.
The disputed domain names both incorporate the JLL trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether, e.g., descriptive or geographic) to a trademark in a domain name is normally insufficient, by itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “sgp” (being the three-letter code abbreviation for “Singapore”) in the one disputed domain name and the descriptive terms “talk to” in the other does not dispel the confusing similarity arising from the incorporation of Complainant’s JLL trademark in both disputed domain names.
In this context, the Panel notes that there is a consensus view among UDRP panels according to which the fact that a domain name has been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element, provided that complainant’s trademark rights are in existence at the time the complaint is filed (see WIPO Overview 3.0, section 1.1.3). Accordingly, the fact that the disputed domain name <jllsgp.com> was first registered on February 4, 2010, thus after Complainant acquired rights in the JONES LANG LASALLE trademark, but before Complainant did so with regard to its JLL trademark, is not in contrast to the above finding that Complainant has standing to file this UDRP Complaint also on the basis of its rights in the JLL trademark.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s JLL trademark, either as a domain name or in any other way. Also, given the apparent identity theft undertaken when registering the disputed domain names, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the terms “Jones Lang Lasalle” or “JLL” on its own. Finally, Respondent has neither used the disputed domain names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent at some point redirected the disputed domain names to websites that pretended to be official Internet presences of Complainant by showing the official JLL logo in a manner likely to confuse Internet users and, thus, allowing Respondent to capture sensitive Internet users’ personal data such as, e.g., email addresses, User IDs and/or passwords to enable e.g. phishing activities. Such behavior neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Now, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a response, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
Finally, this Panel needed to decide whether or not Respondent registered and used both disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.
The Panel notes that the disputed domain name <talktojll.com> was first registered only on May 9, 2019, which is long after Complainant acquired trademarks right in its JONES LANG LASALLE as well as in its JLL trademark. Redirecting the disputed domain name <talktojll.com>, which is confusingly similar to Complainant’s JLL trademark, to a website that pretends to be an official Internet presence of Complainant by showing the official JLL logo in a manner likely to confuse Internet users and, thus, allowing Respondent to capture sensitive Internet users’ personal data such as, e.g., email addresses, User IDs and/or passwords to enable, e.g., phishing activities, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s JLL trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further holds that the same applies to the disputed domain name <jllsgp.com>, regardless of the fact that this disputed domain name was first registered back in 2010, thus after Complainant acquired rights in the JONES LANG LASALLE trademark, but before Complainant did so with regard to its JLL trademark, and unaware of the exact date when the disputed domain name <jllsgp.com> was first acquired by Respondent (which was neither available from the case file nor from the Registrar for reasons of data protection). Given that both disputed domain names were registered – whenever – by Respondent by using a name composed of the company names of both Complainant and its authorized representative and under Complainant’s official contact information in Singapore, thus committing an identity theft, clearly demonstrates that Respondent, by the time of the registration of both disputed domain names, not only was aware of Complainant and its JLL brand, but clearly aimed at the latter in a fraudulent manner, which is sufficient prove of Respondent’s acting in bad faith in respect of both disputed domain names within the meaning of paragraph 4(b) of the Policy.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 names <jllsgp.com> and <talktojll.com> be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: September 9, 2019
1 Respondent appears to have used the name and contact details of Complainant when registering the disputed domain names. In light of the apparent identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.