Jones Lang LaSalle IP, Inc. v Gonzalez Lauren

WIPO Case No. D2023-2598

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Gonzalez Lauren

Case No. D2023-2598

1. The Parties

The Complainant is Jones Lang LaSalle IP, Inc., United States of America, represented by CSC Digital

Brand Services Group AB, Sweden.

The Respondent is Gonzalez Lauren, United States of America.

2. The Domain Name and Registrar

The disputed domain name <joselanglasalle.com> (the “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 16, 2023. On June 16, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 the Complainant on June 19, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 20, 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 the Respondent of the Complaint, and the proceedings commenced on June 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2023.

The Center appointed Michelle Brownlee as the sole panelist in this matter on July 20, 2023. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

page 2

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

7.

4. Factual Background

The Complainant owns the following trademark registrations for the mark JONES LANG LASALLE:

Canada Trademark Registration Number TMA657256, registered on January 24, 2006, in connection with services in international classes 36 and 37;

European Union Trade Mark Registration Number 001126291, registered on June 13, 2000, in connection with services in international classes 36, 37 and 42;

United Kingdom Trademark Registration Number 901126291, registered on June 13, 2000, in connection with services in international classes 36, 37 and 42;

Singapore Trademark Registration Number T9906699B, registered on February 2, 1999, in connection with services in international class 36;

China Trademark Registration Number 1475951, registered on November 14, 2000, in connection with services in international class 36; and

Australia Trademark Registration Number 798445, registered on June 28, 1999, in connection with services in international classes 36 and 37.

The Domain Name was registered on January 13, 2023. The Domain Name resolves to an error page without any content.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated, which, together with its subsidiaries, is known as the JLL group. The Complainant states that the JLL group is a professional services and investment management firm specializing in real estate. The Complainant states that the JLL group is an industry leader in property and corporate facility management services with more than 300 corporate office locations worldwide and which employs approximately 91,000 people and serves clients in more than 80 countries. The Complainant states that the JLL group has won numerous accolades, including Fortune 500 status in 2015, and recognition by Fortune Magazine in 2021 as one of the “World’s Most Admired Companies” for the sixth consecutive year.

The Complainant states that the JLL group owns numerous domain names, including <jll.com> and
<joneslanglasalle.com>. The Complainant states that the JLL group also has a strong social media
presence, with more than 75,000 followers on Twitter, more than 131,000 “likes” on Facebook and more than
729,000 followers on LinkedIn.

The Complainant contends that its JLL and JONES LANG LASALLE brands are well recognized and respected worldwide due to significant investments made by the JLL group to promote them over the years. The Complainant argues that the Domain Name is confusingly similar to its JONES LANG LASALLE mark, noting that the Domain Name removes the letter “n” and inverts the letters “e” and “s”. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith.

page 3

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(i)        the 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 domain name; and

(iii)      the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns rights in the JONES LANG LASALLE trademark. The Panel finds that the Domain Name is confusingly similar to the JONES LANG LASALLE trademark, as the Domain Name is missing one letter and transposes two letters as compared with the trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:

(i)        before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or

(ii)       the respondent has been commonly known by the domain name; 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 at issue.

In this case, the Complainant has put forward a prima facie case and the burden of production of evidence shifts to the Respondent. No evidence has been presented that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainant’s prima facie case. Accordingly, the Panel finds that the Complainant has established this element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i)        circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or

page 4

(ii)       the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii)      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Complainant’s registrations of the JONES LANG LASALLE trademark predate the Respondent’s registration of the Domain Name by more than 20 years, and the Complainant has presented evidence regarding the well-known nature of the JONES LANG LASALLE trademark. The Respondent has not refuted the Complainant’s allegations and evidence. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. The Panel finds that the Complainant has established that the Respondent registered the Domain Name in bad faith.

The question of bad faith use of the Domain Name is more difficult because the Complainant has not presented any evidence that establishes any of the circumstances enumerated in paragraph 4(b) of the Policy. The Domain Name is being held passively without any content posted on a website associated with it. WIPO Overview 3.0, section 3.3. states:

“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 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.”

Considering the distinctiveness and well-known nature of the Complainant’s JONES LANG LASALLE trademark, it is difficult to imagine a good faith use for the Domain Name by anyone other than the Complainant, and the Respondent has not offered any arguments or provided any evidence to support a finding of actual or contemplated good faith use. The Respondent also provided false or incomplete contact details (the Written Notice was not able to be delivered). The totality of the circumstances suggests that the non-use of the Domain Name does not prevent a finding of bad faith. Accordingly, the Panel finds that the Complainant has met its burden of demonstrating bad faith registration and use in this case.

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 Domain Name, <joselanglasalle.com>, be transferred to the Complainant.

/Michelle Brownlee/
Michelle Brownlee
Sole Panelist
Date: August 3, 2023