Jones Lang LaSalle IP, Inc. v 徐栋伟 (dong wei xu)

WIPO Case No. D2023-1616

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. 徐栋伟 (dong wei xu)

Case No. D2023-1616

1. The Parties

Complainant is Jones Lang LaSalle IP, Inc., United States of America (“U.S.”), represented by

CSC Digital Brand Services Group AB, Sweden.

Respondent is 徐栋伟 (dong wei xu), China.

2. The Domain Name and Registrar

The disputed domain name <jllpss.com> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April

13, 2023. On April 13, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On April 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 (Redacted for Privacy) and contact information in
the Complaint. The Center sent an email communication to Complainant on April 17, 2023 providing the
registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an
amendment to the Complaint. On April 17, 2023, the Center transmitted another email communication to the
Parties in English and Chinese regarding the language of the proceeding. Complainant filed an amended
Complaint in English on April 21, 2023, including a request that English be the language of the proceeding.

Respondent did not comment on the language of the proceeding.

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 in English and
Chinese of the Complaint, and the proceedings commenced on April 25, 2023. In accordance with the

Rules, paragraph 5, the due date for Response was May 15, 2023. Respondent did not submit any

response. Accordingly, the Center notified Respondent’s default on May 16, 2023.

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The Center appointed Yijun Tian as the sole panelist in this matter on June 6, 2023. 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

A. Complainant

Complainant, Jones Lang LaSalle IP, Inc., is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated.
Jones Lang LaSalle Incorporated and all of its consolidated subsidiaries comprises the JLL Group (Annex
6.2 to the Complaint). The JLL Group is an industry leader in property and corporate facility management
services. It has approximately 91,000 employees and serves clients in over 80 countries from more than
300 corporate office locations worldwide. In 2020, the JLL Group had a revenue of USD 6.1 billion (Annex

6.1 to the Complaint). In 2015, it achieved Fortune 500 status and is recognized by Fortune Magazine as

one of the “World’s Most Admired Companies” in 2021 for the sixth consecutive year.

According to the Complaint, Complainant has rights in the JLL marks across various jurisdictions. It has registered trademark rights for the use of the mark JLL and multiple variants including the Chinese trademark registration No. 10453828 registered on March 28, 2013; the U.S. trademark registration No. 4564654 registered on July 8, 2014; and the European Union trademark registration No. 010603447 registered on August 31, 2012. The JLL Group has a large Internet presence and is the owner of numerous domain names, which incorporate the JLL trademark, including <jll.com> and <joneslanglasalle.com>.

B. Respondent

Respondent is 徐栋伟 (dong wei xu), China. The disputed domain name was registered on November 9,

2022. According to the Complaint, the disputed domain name previously resolved to a website with

pornographic content. The disputed domain name is currently inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s JLL trademarks. The only difference between the disputed domain name and Complainant’s JLL marks are the addition of the term “pss”. This does not avoid confusion with Complainant’s JLL marks.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:

(a) Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter;

(b) Such additional delay, considering the obviously abusive nature of the disputed domain name and its

website, poses continuing risk to Complainant and unsuspecting consumers seeking Complainant or its
products;

(c) The disputed domain name is comprised of Latin characters;

(d) Complainant previously sent a cease-and-desist letter to Respondent, and Respondent had ample

time and opportunity to respond to such letter and request that communications continue in Chinese. allow Respondent to dictate the course of this matter and further burden Complainant at this juncture would contravene the spirit of the UDRP and disadvantage Complainant;

(e) Complainant further notes that there is evidence Respondent understands the English language. This

is displayed in Respondent’s domain portfolio, of which Complainant submits a large portion of the domain

names connected to Respondent’s email address comprise of English dictionary terms such as

<createmyccs.com>, <crossfitwcf.com>, <downorder.com>, and <elisonwork.com> (Annex 14 to the

amended Complaint).

(f) It would unduly burden Complainant to have to arrange and pay for translation where Respondent has

demonstrated behavior that disrupts Complainant’s business and has already required Complainant to

devote significant time and resources to addressing this instance of abuse.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue

for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK)

electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the UDRP panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan

v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules

vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also
ensuring both that the parties are treated with equality, and that each party is given a fair opportunity
to present its case.

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Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the

domain name particularly where the same as that of the complainant’s mark, (iii) any content on the

webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular
language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay
in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled
domain names registered, used, or corresponding to a particular language, (viii) in cases involving
multiple domain names, the use of a particular language agreement for some (but not all) of the
disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name,

or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that

of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v.

MUNHYUNJA, WIPO Case No. D2003-0585).

On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters, rather than Chinese script; (b) the

generic Top-Level Domain (“gTLD”) of the disputed domain name is “.com”, so the disputed domain name

seems to be prepared for users worldwide, particularly English speaking countries; (c) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no

objection to Complainant’s request that English be the language of the proceeding; and (d) the Center

informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese.

The Panel would have accepted a Response in either English or Chinese but none was filed.

Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both
Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that

English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or

service mark in which Complainant has rights; and

(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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the JLL marks. The disputed domain name comprises the

JLL mark in its entirety. The disputed domain name only differs from Complainant’s JLL marks by adding

“pss”, and the gTLD “.com” as a suffix to the JLL marks. This does not compromise the recognizability of

Complainant’s marks within the disputed domain name, nor eliminate the confusing similarity between

Complainant’s registered trademarks and the disputed domain name (Decathlon v. Zheng Jianmeng, WIPO

Case No. D2019-0234).

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Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a

trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar

approximation, regardless of the other terms in the domain name.” (Wal-Mart Stores, Inc. v. Richard

MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Further, in relation to the gTLD suffix, WIPO Overview 3.0 states: “The 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 3.0, section 1.11.1.)

The Panel therefore holds that the disputed domain name is confusingly similar to Complainant’s JLL marks,

and the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that
Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired

no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to

rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have

satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO
Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated, and a part of the JLL Group, which is an industry leader in property and corporate facility management services. The JLL Group has approximately 91,000 employees and serves clients in over 80 countries from more than 300 corporate office locations worldwide. In 2015, it achieved Fortune 500 status and is

recognized by Fortune Magazine as one of the “World’s Most Admired Companies” in 2021 for the sixth

consecutive year.

Moreover, Respondent is not an authorized dealer of JLL branded products or services. Complainant has
therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed
domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption
(The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610;
Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire
Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in
connection with a bona fide offering of goods or services. Respondent has not provided evidence of
legitimate use of the disputed domain name or reasons to justify the choice of the mark JLL in the disputed
domain name and in their business operation. There has been no evidence adduced to show that

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Complainant has licensed or otherwise permitted Respondent to use the JLL marks or to apply for or use any domain name incorporating the JLL marks.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the
disputed domain name. There has been no evidence adduced to show that Respondent has any registered
trademark rights with respect to the disputed domain name. Respondent registered the disputed domain
name in 2022, after the JLL marks became widely known. The disputed domain name is confusingly similar

to the JLL marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or
fair use of the disputed domain name. By contrast, the disputed domain name previously resolved to a
website containing pornographic content. It seems that Respondent possibly made profits through the
Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei
Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case
No. D2017-2203.) Further, the disputed domain name is currently inactive.

Accordingly, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily
for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to

Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for

valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the

disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has

engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion

with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website

or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registration in Bad Faith

The Panel finds that Complainant has a widespread reputation in the JLL marks with regard to its products and services. As mentioned above, Complainant has exclusive rights in the JLL marks. Based on the information in the Complaint, Complainant is part of the JLL Group, which is an industry leader in property and corporate facility management services. The JLL Group has approximately 91,000 employees and serves clients in over 80 countries from more than 300 corporate office locations worldwide. Further, the

Complainant asserts that the additional term “pss” in the disputed domain name refers to the Houston based

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PSS Industrial Group, a distributor, who as of December 15, 2020, agreed to a new industrial lease in knowledge of the JLL marks at the time of the registration of the disputed domain name (in 2022).

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP

decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of

the Respondent to respond to the Complaint further supports an inference of bad faith”. See also

Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case

No. D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Use in Bad Faith

According to the Complaint, Respondent previously used the website resolved by the disputed domain name to provide pornographic content. Thus, the Panel concludes that Respondent has used the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to

Respondent’s website.

Given the reputation of the JLL marks and the additional term in the disputed domain name related to

Complainant’s business partner, the Panel finds that the public is likely to be confused into thinking that the

disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood
of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed
domain name resolved. In other words, Respondent has through the use of a confusingly similar disputed
domain name created a likelihood of confusion with the JLL marks. Moreover, as mentioned above,
Respondent offered pornographic content, presumably for commercial gain.

The Panel therefore concludes that the disputed domain name has been registered and used by Respondent in bad faith. Such conduct falls within the language of paragraph 4(b)(iv) of the Policy. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant. .

Furthermore, at the time this decision is rendered, the disputed domain name is inactive. In terms of inactive

domain names, the WIPO Overview 3.0 provides: “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 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.”

Taking into account all the circumstances of this case, the Panel concludes that the current non-use of the disputed domain name by Respondent is in bad faith also. Further, given the lack of response, the Panel cannot envision any plausible use of the disputed domain name that would not be in bad faith under the

present circumstances.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the JLL marks, intended to ride on the goodwill of these trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name has been resolved is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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7. Decision

For all 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 <jllpss.com> be transferred to Complainant.

/Yijun Tian/

Yijun Tian

Sole Panelist
Date: June 26, 2023