Jones Lang LaSalle IP, Inc. v li gui zhi

WIPO Case No. D2023-2524

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. li gui zhi

Case No. D2023-2524

1. The Parties

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

CSC Digital Brand Services Group AB, Sweden.

The Respondent is li gui zhi, China.

2. The Domain Name and Registrar

The disputed domain name <jllsg.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2023. On June 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 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 the 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. The Complainant filed an amended Complaint in English on June 21, 2023.

On June 16, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 19, 2023, the Complainant submitted a request that English be the language of the proceeding. The 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2023.

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The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on August 2, 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

The Complainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated and its group of related companies (also referred to as the “JLL Group”). Headquartered in Chicago, United States, the JLL Group is a professional services and investment management firm specializing in real estate. Its regional headquarters for the Americas, EMEA and Asia Pacific businesses are located in Chicago, London and Singapore, respectively. The JLL Group provides property and corporate facility management services, and has large international business operations with a portfolio of 5 billion square feet worldwide, a workforce of approximately 91,000 and clients in over 80 countries. In 2020, the JLL Group reported a revenue of USD 6.1billion.

The Complainant provides evidence that it owns a large international trademark portfolio for JLL and JONES LANG LASALLE, including, but not limited to, Chinese Trademark Registration number 10453827 for JLL, registered on May 28, 2013; United States Trademark Registration number 4564654 for JLL, registered on July 8, 2014 and Chinese Trademark Registration number 11231728 for JONES LANG LASALLE (JLL), registered on March 28, 2014. The Complainant also has a large Internet and social media presence and owns a portfolio of domain names incorporating its trademark JLL, including <jll.com>.

The disputed domain name was registered on December 17, 2022, and is therefore of a later date than the registration of the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to a website displaying links to sports betting and casino gambling websites.

The Complainant also provides evidence that it attempted to settle this dispute amicably through its cease- and-desist letters sent on January 31, 2023 (as well as subsequent reminders), but states that it received no response from the Respondent.

5. Parties’ Contentions
A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for JLL, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information. The Complainant particularly contends that the Respondent is familiar with the Complainant and its business and that the Respondent is targeting its trademarks with the registration of the

disputed domain name to intentionally confuse unsuspecting Internet users into visiting its website with a
“bait-and-switch” strategy. The Complainant argues that the Respondent is using the disputed domain name
to redirect Internet users to a website displaying links to sports betting and casino gambling websites, that
the Respondent is in no way connected to or licensed by the Complainant, that there are no justifications for
the use of its trademarks in the disputed domain name. The Complainant also contends that the disputed
domain name is so obviously connected with the Complainant that its very use by the Respondent, with no
connection to the Complainant, suggests ‘opportunistic bad faith. The Complainant finally also argues that
the Respondent’s use of the disputed domain name does not confer any rights or legitimate interests on it,
and constitutes registration and use in bad faith.

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The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings
6.1. Preliminary Issue: Language of the proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

According to the Registrar’s verification response, the language of the Registration Agreement for the disputed domain name is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requested that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited to present a response and arguments in either English or Chinese and that all the communications sent from the Center to the Respondent were in both Chinese and English); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant.

In view of all these elements, the Panel concludes that the language of proceedings shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the 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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the marks JLL based on its intensive use and longstanding registration of the same as trademarks.

As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, namely the Complainant’s trademark JLL followed by the suffix “SG”, which the Complainant argues is a common abbreviation used for the Singapore. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “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

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domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

(see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The
Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademarks for
JLL, which remain easily recognizable in the disputed domain name. The applicable generic Top-Level
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s
registered trademark, and that the Complainant has satisfied the requirements of the first element under the

Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, is not a bona fide provider of goods or services under the

disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain
name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As
such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see
WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the
Respondent in reply.

Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name directs to a website displaying links to sports betting and casino gambling websites, which shows the intention on the part of the Respondent to take unfair advantage of the Complainant’s trademarks to obtain undue commercial gains. The Panel also notes that there are no elements in this case that point to the Respondent having made any reasonable and demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s well-known trademarks for JLL, by using such marks in their entirety in the disputed domain name to mislead and divert consumers to the website at the disputed domain name. Given the distinctiveness and well-established fame of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademarks, and that the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known marks. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in JLL and used these extensively. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name redirected Internet users to a website displaying links to sports betting and casino gambling websites. The Panel accepts that this shows the intention on the part of the Respondent to obtain undue commercial gains from using the Complainant’s well-known JLL trademarks in the disputed domain name,

and thereby also tarnishes the Complainant’s trademarks (see also prior UDRP cases accepting tarnishment from use of well-known trademarks to direct Internet users to a website offering gambling services Sodexo v. Li Li, WIPO Case No. D2015-1018). On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

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Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under 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, <jllsg.com>, be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: August 16, 2023