Jones Lang LaSalle IP, Inc. v Mark Mclain

WIPO Case No. D2022-4359

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Mark Mclain

Case No. D2022-4359

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 Mark Mclain, United States.

2. The Domain Name and Registrar

The disputed domain name <ap-jlls.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2022. On November 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 November 17, 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 November 21, 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 November 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2022.

The Center appointed Kathryn Lee as the sole panelist in this matter on December 20, 2022. 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

The Complainant is a wholly-owned subsidiary of Jones Lang LaSalle Incorporated and a part of the JLL group, a professional services and investment management firm specializing in real estate. The JLL group has officially marketed itself under the name “JLL” since 2014 and is listed on The New York Stock Exchange under the symbol “JLL”.

The JLL group has a portfolio of 5 billion square feet worldwide and has approximately 91,000 employees in more than 300 office locations in 80 countries. In 2020, it reported a revenue of USD 6.1 billion. The JLL group became a Fortune 500 company in 2015, and was recognized as one of the “World’s Most Admired Companies” by Fortune Magazine in 2016-2021.

The Complainant owns a family of marks consisting of and containing JLL in a number of jurisdictions
worldwide, including the following trademark registrations for the mark JLL: Reg. No. 010603447, registered
in the European Union on August 8, 2012; Reg. No. TMA875711 registered in Canada on April 15, 2014;
Reg. No. 4564654 registered in the United States on July 8, 2014; and Reg. No. 4709457 registered in the

United States on March 24, 2015.

The Respondent appears to be an individual with an address in the United States.

The disputed domain name was registered on July 20, 2020, and resolves to a website showing pay-per-click links that redirect to real estate related services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the JLL trademark in which it has rights since it is composed of “jlls” which is the Client’s trademark which has been deliberately misspelled with the addition of the letter “s”, and the term “ap” which is an abbreviation for “Asia-Pacific”. The Complainant contends that those familiar with the JLL group’s international brand would assume the disputed domain name is affiliated with its Asia-Pacific operations and that the JLL group uses the subdomain to provide email services for its employees based in the Asia Pacific region.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant further contends that the Respondent’s use of the disputed domain name which displays pay-per-click links does not represent a bona fide offering of goods and services which would give rise to rights or legitimate interests in the disputed domain name, or constitute legitimate noncommercial nor fair use.

Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith. Specifically, the Complainant contends that given the fame of the JLL group and its trademark, the Respondent knew or should have known of the JLL group and its trademark at the time of registration of the disputed domain name. The Complainant asserts that the Respondent intentionally registered a domain name composed of the Complainant’s famous trademark in its entirety with an additional letter, and combined with a geographical indicator in order to confuse visitors as to the source of the disputed domain name and its website, and mislead visitors as to the source or sponsorship of the disputed domain name thus capitalizing on the fame and goodwill of the Complainant’s trademark. The Complainant also asserts that it reached out to the Respondent several times to resolve this dispute but the Respondent did not

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respond, and that the Respondent used a privacy service to hide its identity, which are also evidence of bad

faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it has rights to the trademark JLL. As for the disputed domain name, it consists of the “jlls” portion which is the Complainant’s mark with the letter “s” at the end along with the term “ap” separated by a hyphen. According to WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, a domain name is considered confusingly similar to a trademark if it “incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name”.

In this regard, the JLL mark is readily recognizable within the disputed domain name and the additional elements do not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). Specifically, the term “ap” is separated from the JLL mark by a hyphen, and the letter “s” is a common suffix added to a word to make it plural and does not affect the recognizability of the JLL mark within the disputed domain name.

For the reasons mentioned above, the Panel finds that the first element has been established.

B. Rights or Legitimate Interests

On the basis of the present record as set out above, the Panel finds that the Complainant has made the required allegations to support a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie case has been established, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining with the Complainant. The Respondent did not specifically respond to these assertions by the Complainant, and there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.

Further, the disputed domain name resolves to a page with pay-per-click links that redirect to real estate services, which is the business sector for which the Complainant’s trademark is used. Panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or other mislead Internet user (see WIPO Overview 3.0, section 2.9).

In addition, there is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name, nor is there any evidence of the Respondent’s demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services

For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.

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C. Registered and Used in Bad Faith

The Panel finds that there is sufficient evidence to find bad faith in this case.

WIPO Overview 3.0

Section 3.1 of the provides that bad faith under the UDRP is “broadly understood to domain name.

occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the
Complainant has shown that the JLL mark of the Complainant was well-known at the time of the
Respondent’s registration of the disputed domain name, and the Panel is prepared to accept that the

The Panel also finds that the Respondent used the disputed domain name in bad faith. By linking the disputed domain name with a parking page displaying pay-per-click links that redirect to real estate services which is the business sector the Complainant’s trademark is used, the Respondent created a likelihood of confusion and benefited commercially from the confusion of Internet users that visited the site by mistake as per paragraph 4(b)(iv) of the Policy.

Further, the “ap” portion of the domain name is offset from “jlls” by a hyphen and is likely to confuse or mislead visitors to believe that the disputed domain name belongs to a department within the JLL group, for example, its “Asia-Pacific” regional office or “accounts payable” section.

Panels have also viewed, in certain circumstances, a respondent’s use of a privacy service and failure to respond to a cease and desist letter as indications of bad faith.

Based on the above, with no explanation to the contrary from the Respondent, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark in order to unfairly profit from the likelihood of association with the Complainant’s trademark.

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 <ap-jlls.com> be transferred to the Complainant.

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: January 19, 2023