Jones Lang LaSalle IP, Inc. v David Linder

WIPO Case No. D2023-2546

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Jones Lang LaSalle IP, Inc. v. David Linder

Case No. D2023-2546

1. The Parties

Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States or U.S.”), represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is David Linder, United States.

2. The Domain Name and Registrar

The disputed domain name <joneslanglasalleus.com> (the “Disputed Domain Name”) is registered with

Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2023. On June 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to Complainant on June 16, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 21, 2023.

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 Respondent of the Complaint, and the proceedings commenced on June 29, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2023. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on July 25, 2023.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 14, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant states that it is “a wholly-owned subsidiary of Jones Lang LaSalle Incorporated” and that “Jones Lang LaSalle Incorporated and all of its consolidated subsidiaries comprise[] the JLL group”. Complainant further states that the JLL group is listed on the New York Stock Exchange (JLL) and is “a professional services and investment management firm specializing in real estate” with “a portfolio of 5 billion square feet worldwide,” “a workforce of approximately 91,000,” and “clients in over 80 countries from more than 300 corporate office locations worldwide.” Further, Complainant states that JLL group reported revenue in 2020 of USD 6.1 billion.

Complainant further states, and provides documentation in support thereof, that it owns trademark
registrations in multiple jurisdictions for the mark JONES LANG LASALLE, including European Union
Registration No. 001126291 (registered June 13, 2000). These registrations are referred to herein as the

“JONES LANG LASALLE Trademark.”

The Disputed Domain Name was created on February 9, 2023, and is not associated with an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

-	The Disputed Domain Name is confusingly similar to the JONES LANG LASALLE Trademark because the Disputed Domain Name “captur[es], in its entirety” the JONES LANG LASALLE Trademark, “simply adding the letters “[us]” to the end of the trademark, which the Complainant submits is an abbreviation of the geographical location the United States,” which “does not negate the confusing similarity”.
-	Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; “the pertinent Notice of Registrant Information identifies the Registrant as ‘David
Linder’, which does not resemble the Disputed Domain Name in any manner”; “at the time of filing the complaint, Respondent was using a privacy WHOIS service, which past panels have also found to equate to a lack of legitimate interest”; “Respondent is using the Disputed Domain Name to redirect [I]nternet users to a website that resolves to a blank page and lacks content”; and “Respondent registered the Disputed Domain Name on February 9, 2023, which is significantly after Complainant filed for registration of its JONES LANG LASALLE trademarks”.
-	The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Complainant and its JONES LANG LASALLE trademarks are known internationally, with trademark registrations across numerous countries”; “Complainant has marketed and sold its goods and services using this trademark since March 11, 1999, which is well before Respondent’s registration of the Disputed Domain Name on February 9, 2023”; “[a]t the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se”; “Complainant has developed a strong global reputation in the JONES LANG LASALLE trademark, which the Respondent is no doubt aware of due to their choice of registering a Domain Name which []… is so closely similar to the Complainant’s trademark”; although

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“[t]he Disputed Domain Name currently resolves to an inactive site and is not being used,… past
Panels have noted that the word bad faith ‘use’ in the context of [paragraph] 4(a)(iii) does not require a
positive act on the part of the Respondent – instead, passively holding a domain name can constitute
a factor in finding bad faith registration and use”; “at the time of initial filing of the Complaint,
[Respondent] had employed a privacy service to hide its identity”; “Respondent has ignored
Complainant’s attempts to resolve this dispute outside of this administrative proceeding”; and the
Disputed Domain Name has “been set up with mail exchanger (MX) records,” which “shows that the

Disputed Domain Name may be actively used for email purposes”.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three
elements to obtain the relief it has requested, with respect to the Disputed Domain Name: (i) the Disputed
Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has
rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the JONES LANG LASALLE Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the JONES LANG LASALLE
Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain
Name only (i.e., “joneslanglasalleus”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name
(e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under
the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Also, as set forth in section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Finally, of course, the fact that the Disputed Domain Name does not contain spaces between the words “jones” and “lang” and “lasalle” is irrelevant for purposes of the Policy because “the addition or substitution of spaces… is… inconsequential in determining identity or confusing similarity”. Six Continents Hotels, Inc. v. Finlaw Agency and ResSystem.com, Inc., WIPO Case No. D2002-1159. See also, e.g., Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027 (spaces “cannot be reproduced in a domain name” and therefore are irrelevant); and EMI Records Limited v Complete Axxcess, WIPO Case No. D2001-1230 (“the lack of a space between the words” in a disputed domain name is a “difference[]… incapable of differentiating the domain name in dispute from the Complainant’s trade marks”).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

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B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner,

including in domain names”; “the pertinent Notice of Registrant Information identifies the Registrant as
‘David Linder’, which does not resemble the Disputed Domain Name in any manner”; “at the time of filing the
complaint, Respondent was using a privacy WHOIS service, which past panels have also found to equate to
a lack of legitimate interest”; “Respondent is using the Disputed Domain Name to redirect [I]nternet users to
a website that resolves to a blank page and lacks content”; and “Respondent registered the Disputed
Domain Name on February 9, 2023, which is significantly after Complainant filed for registration of its JONES
LANG LASALLE trademarks”.

WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Moreover, the Panel finds that the Disputed Domain Name is inherently misleading. See WIPO Overview

3.0, section 2.5.1.

The Panel finds that Complainant has established its prima facie case and without any evidence from
Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the

Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s
documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the
domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii)
the registrant has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for
commercial gain, Internet users to the registrant’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
registrant’s website or location or of a product or service on the registrant’s website or location. Policy,
paragraph 4(b).

As described above, the Disputed Domain Name is not associated with an active web page. As set forth in section 3.3 of WIPO Overview 3.0:

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered 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

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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. Citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003.

Here, it is apparent that the JONES LANG LASALLE Trademark is very distinctive and has a strong reputation, given that the mark has been protected by multiple registrations in multiple jurisdictions for more than 20 years and is used by an entity that is a wholly owned subsidiary of a company that employs 91,000 people, has clients in more than 80 countries, has more than 300 offices, and reported revenue in 2020 of USD 6.1 billion. Further, Respondent has not submitted a response, Respondent used a privacy service to conceal its identity, and it is implausible that the inherently misleading Disputed Domain Name could be put to any good faith use.

Further, section 3.14. of WIPO Overview 3.0 says: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Here, for the reasons cited above, the Panel finds that the JONES LANG LASALLE Trademark is famous or widely known for purposes of the Policy, and that combining the trademark with the geographic abbreviation “US,” as Respondent has done here, creates a presumption of bad faith.

Accordingly, the Panel finds that Complainant has proven the third 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 <joneslanglasalleus.com> be transferred to the Complainant.

/Douglas M. Isenberg/
Douglas M. Isenberg
Sole Panelist
Date: August 15, 2023