Jones Lang LaSalle IP, Inc. v oscar jackie

WIPO Case No. D2024-2992

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. oscar jackie

Case No. D2024-2992

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 oscar jackie, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <jonelanglasalle.pro>, is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2024. On
July 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 24, 2024, 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, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on July 30, 2024, 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 August 5, 2024.

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 August 6, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 26, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 28, 2024.

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The Center appointed Dennis A. Foster as the sole panelist in this matter on September 10, 2024. 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 part of Jones Lang LaSalle, Inc., a Delaware corporation headquartered in Chicago, of commercial real estate management and investment services.

Illinois, United States of America. Formed in 1999 with the merger of Jones Lang Wooton and LaSalle

The Complainant owns the following JONES LANG LASALLE trademark registrations:

- European Union trademark registration no. 001126291, registration date June 13, 2000, international

classes 036, 037, and 042 for real estate management and related technology services.

- United States of America federal trademark no. 3083128, registration date April 18, 2006, international
classes 036 and 037 for real estate management services and related technology services.

The Complainant also owns numerous other JONES LANG LASALLE trademark registrations in various foreign countries.

The Complainant’s primary domain name is <joneslanglasalle.com> which was registered on December 3, 1998. In addition, the Complainant is active on social media through its Facebook, X, and LinkedIn pages.

The Respondent is an individual located in the United States of America who registered the disputed domain name on February 26, 2024. The disputed domain name resolves to a website that provides pay-per-click (‘PPC”) links to other websites offering real estate services and that also is Mail Exchange (“MX”) equipped to handle email traffic.

In April and May of 2024, the Complainant contacted the Respondent demanding that the disputed domain name be turned over to the Complainant, but the Respondent has never replied.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

- The Complainant’s registered trademarks give it the exclusive right to use the name JONES LANG

LASALLE in commerce.

- The disputed domain name is a deliberate misspelling of the Complainant’s trademark and should be

considered confusingly similar to the Complainant’s trademark.

- The Respondent is not sponsored by or affiliated with the Complainant in any way.

- The Respondent is using the disputed domain name to redirect Internet users to a website featuring PPC links to third party websites, some of which directly compete with the Complainant’s business. This is not a bona fide offering of goods and services.

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- The Respondent registered the disputed domain name years after the Complainant registered its

trademarks and was using them in commerce.

- The Respondent’s one-letter misspelling of the disputed domain name is a form of “typo-squatting”.

- The Respondent’s website with PPC links to competitors of the Complainant is proof of bad faith use of the

disputed domain name.

- The disputed domain name should be transferred from the Respondent to the Complainant.

B. Respondent

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

6. Discussion and Findings

In accordance with Policy paragraphs 4(a)(i) to (iii), the Panel may find for the Complainant and order a transfer of the disputed domain name, if the Complainant proves that:

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

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided the registration details of several of its JONES LANG LASALLE trademarks which are transcribed above in the Factual Background section. Under standard Policy doctrine, this shows that the Complainant has trademark rights in the disputed domain name (WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).

The disputed domain name is not identical to the Complainant’s trademark, but differs because the Respondent has omitted the letter “s” from “Jones”. Per WIPO Overview 3.0 at section 1.9, “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”

And finally, a generic Top-Level Domain such as “.pro” normally is not taken into account when conducting a
Policy analysis of identity and confusing similarity (WIPO Overview 3.0, section 1.11.1).

The Panel thus finds that the Complainant has carried its burden of proof to show that the disputed domain name is confusingly similar to a name in which the Complainant has trademark rights per Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Owing to the difficulty of a complainant proving the negative assertion that a respondent does not have rights or legitimate interests in a given disputed domain name, it is broadly accepted in Policy decisions that a complainant need only make a prima facie case in this regard, and then the burden of production shifts to the respondent. The overall burden of proof, however, remains on the complainant. (WIPO Overview 3.0, section 2.1).

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According to the Complainant, the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant further asserts that it has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Panel finds that this constitutes prima facie case on the Complainant’s behalf.

The Respondent did not come forward to file a response. The Panel finds the record shows the Respondent is using the disputed domain name to redirect Internet users to a website featuring PPC links to third-party websites that compete with the Complainant's real estate services business. Presumably the Respondent receives PPC fees from the linked websites. Prior Policy decisions on the whole agree that PPC links to competing goods or services are not a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i). See WIPO Overview 3.0 at section 2.9, “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 otherwise mislead Internet users.”

The Panel further finds the Respondent is not commonly known by the disputed domain name, which prevents claiming rights or legitimate interests per Policy paragraph 4(c)(ii). Also, the Respondent’s PPC use is not a noncommercial or fair use as allowed under Policy paragraph 4(c)(iii).

The Panel thus finds that the Complainant has carried its burden of proof to show that the Respondent does not have rights or legitimate interests in the disputed domain name per Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Previous Panels have found bad faith under Policy paragraph 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring PPC links to third-party websites that compete with a complainant or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See also PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006- 0162 (March 30, 2006) (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith.”).

In our instant case, the Respondent has created a likelihood of confusion with the Complainant and its trademark by registering a domain name that is identical to the Complainant’s trademark but for the omission of the letter “s”. As the Complainant contends, it is obvious that the Respondent at registration intended to use the disputed domain name to confuse Internet users looking for Complainant’s services, and to mislead them as to the source of the disputed domain name and website.

Based on the above discussion, the Panel finds that the Complainant has carried its burden of proof to show
that the Respondent registered and is using the disputed domain name in bad faith per Policy paragraph

4(a)(iii).

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 <jonelanglasalle.pro> be transferred to the Complainant.

/Dennis A. Foster/
Dennis A. Foster
Sole Panelist
Date: September 24, 2024