Jones Lang LaSalle IP, Inc. v Liufeng Yu

WIPO Case No. D2022-1173

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Liufeng Yu

Case No. D2022-1173

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 Liufeng Yu, China.

2. The Domain Name and Registrar

The disputed domain name <jll-max.com> is registered with Alibaba.com Singapore E-Commerce Private

Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2022. On April 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2022 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 April 7, 2022.

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 April 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2022.

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The Center appointed Luca Barbero as the sole panelist in this matter on May 5, 2022. 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. Formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999, the Complainant has been doing business under the name “JLL” since 2014.

Headquartered in Chicago, United States, the Complainant is a professional services and investment management firm specializing in real estate. Its regional headquarters for the Americas, Europe, Middle East, and Africa (EMEA) and Asia Pacific businesses are located in Chicago, London and Singapore, respectively. The group’s common stock is listed on the New York Stock Exchange under the symbol “JLL”.

The Complainant is the owner of several trademark registrations for JLL, including the following, as per trademark certificates submitted as annexes to the Complaint:

- China trademark registration No. 10453829 for JLL (word mark), registered on March 28, 2013 in class 36;

- China trademark registration No. 10453828 for JLL (word mark), registered on March 28, 2013, in class 37;

- China trademark registration No. 10453827 for JLL (word mark), registered on May 28, 2013, in class 42;

- United States trademark registration No. 4564654 for JLL (word mark), registered on July 8, 2014, in

classes 35, 36, 37, and 42;

- United States trademark registration No. 4709457 for JLL (figurative mark), registered on March 24, 2015 in

classes 36, 37, and 42; and

- European Union trademark registration No. 010603447 for JLL (word mark), registered on August 31, 2012
in classes 36, 37, and 42.

The Complainant is also the owner of numerous domain names, including <jll.com> registered on November 20, 1998 and <joneslanglasalle.com>, registered on December 3, 1998, which are used by the Complainant to promote its services under the trademark JLL.

The disputed domain name <jll-max.com> was registered on July 30, 2021 and is currently pointed to a website in Chinese featuring adult content and banners redirecting to other gambling websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark JLL in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of a hyphen, the generic term “max” and the generic Top-Level Domain (“gTLD”) “.com”, which are not sufficient to overcome a finding of confusing similarity.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way, was never licensed, authorized, or permitted to register domain names incorporating the Complainant’s trademark, is

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not commonly known by the disputed domain name and cannot be regarded as having acquired rights to or
legitimate interests in the disputed domain name.

The Complainant states that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolved to a website featuring adult content and, subsequently, to a blank page.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, given its worldwide reputation and presence on the Internet including its Fortune status as one of the “World’s Most Admired Companies”, the Respondent knew, or at least should have known, of the existence of the Complainant at the time of registering the disputed domain name and states that the disputed domain name was thus deliberately registered by the Respondent to cause confusion among Internet users as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name.

The Complainant emphasizes that the Respondent used the disputed domain name in bad faith by initially pointing it to an adult content website and subsequently redirecting it to a blank page.

The Complainant informs the Panel that the Respondent also failed to respond to the Complainant’s cease- and-desist letter, which is to be considered a further circumstance evidencing the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the

following:

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

(ii)          that the Respondent has no rights or legitimate interests in respect of the disputed domain name;

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark JLL based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 1 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Complainant’s trademark JLL is entirely reproduced in the disputed domain name, with the mere addition of a hyphen, the term “max” and the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

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Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly
similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or

services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that he intends to make a legitimate noncommercial or fair use of the disputed domain name.

Indeed, according to the screenshots submitted as Annex 3 to the Complaint, the Respondent pointed the disputed domain name to a website featuring adult content with banners redirecting to other gambling websites and, whilst it appears that the disputed domain name was subsequently redirected to a blank page, the Panel notes that, at the time of the drafting of the Decision, it is again pointed to a website displaying adult content as well as banners leading to other gambling websites. The Panel finds that such use of the disputed domain name, confusingly similar to the Complainant’s trademark, certainly does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, along these lines, Guccio Gucci S.p.A v. Roberto Baggio, WIPO Case No. D2009-1196 and Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

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In the case at hand, the Panel finds that, in light of the prior registration and use of the Complainant’s
trademark JLL in connection with the Complainant’s services and the reputation acquired by the
Complainant in the trademark JLL due to its extensive use in connection with the Complainant’s services, the
Respondent likely registered the disputed domain name, confusingly similar to the trademark JLL, having the

Complainant’s trademark in mind.

The Panel also finds that, in light of the Respondent’s use of the disputed domain name to redirect users to a
website featuring adult content material and banners leading to other gambling websites, the Respondent
intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood
of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of
his website according to paragraph 4(b)(iv) of the Policy.

e.g., International Business Machines Corporation v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Xie Gege, WIPO Case No. D2021-0245.

Moreover, the Respondent’s use of the disputed domain name is apt to tarnish the reputation of the confusingly similar domain name to draw Internet users to a website hosting pornographic content is clear evidence of bad faith. See,

In accordance with prior UDRP decisions, the Panel finds that the Respondent’s failure to respond to the Complainant’s cease-and-desist letter is further evidence of his bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is

identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not
consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) 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 <jll-max.com> be transferred to the Complainant.

/Luca Barbero/
Luca Barbero
Sole Panelist
Date: May 20, 2022