WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. Thomas Borg

Case No. D2019-1014

1. The Parties

The Complainant is Jones Lang LaSalle IP, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Thomas Borg, United States.

2. The Domain Name and Registrar

The disputed domain name <eu-jil.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on June 4, 2019. 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

Headquartered in Chicago, Illinois, United States, the Complainant is a professional services and investment management firm specializing in real estate. The Complainant was formed by the merger of two companies in 1999. Since 2014, the Complainant has marketed itself under the name “JLL.” With a workforce of over 90,000 employees, the Complainant serves clients in over 80 countries from more than 300 corporate office locations worldwide. The Complainant is a publicly traded company on the New York Stock Exchange.

The Complainant owns numerous trademark registrations in the United States and worldwide, including, but not limited to: JLL, United States Registration No. 4,564,65, registered on July 8, 2014, in international classes 35, 36, 37, and 42; JLL (and design), United States Registration No. 4,709,457, registered on March 24, 2015, in international classes 36, 37, and 42; Canadian Registration No. TMA875711, registered on April 15, 2014, in international classes 35, 36, 37, and 42; and JLL, European Union Trademark Registration No. 010603447, registered on August 31, 2012, in international classes 36, 37, and 42 (hereinafter collectively referred to as the “JLL Mark”).

The Complainant is also the owner of domain names featuring the letters “jll”, specifically <jll.com> (registered in 1998) and <jll.eu> (registered in 2006), which host its official website.

The Respondent registered the Disputed Domain Name on November 2, 2018. The Disputed Domain Name is used passively, that is, when clicking on the Disputed Domain Name, it resolves to a parking page that states: “[t]his site can’t be reached. eu-jll.com’ s server IP address could not be found.”¹ Prior to commencing this proceeding, the Complainant’s attorney sent three cease and desist letter to the Respondent to inform it that it was infringing the Complainant’s trademark, and requesting that it transfer the Disputed Domain Name to the Complainant. The Respondent did not reply to those letters.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the JLL Mark.

It is uncontroverted that the Complainant has established rights in the JLL Mark based on its many years of use as well as its numerous trademark registrations for the JLL Mark worldwide. The Disputed Domain Name <eu-jil.com> consists of the geographic or descriptive term “eu”, connected by a hypen to a misspelling of the JLL Mark, and followed by the generic Top-Level Domain (“gTLD “) “.com”.

The addition of the geographic abbreviation “eu” for European Union to the Complainant’s JLL Mark does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.8; Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant’s trademark).

Although the Disputed Domain Name <eu-jil.com> contains a hyphen between the letters “eu” and “jil”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“this Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).

Further, “jil” is a misspelling of “JLL”, the Complainant’s well-known trademark, with a lower case “i” in place of an upper case “L” in the correctly spelled trademark. This is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, however, the use of the “i” instead of the “L” does not operate to prevent a finding of confusing similarity between the JLL Mark and the Disputed Domain Name. See Jones Lang LaSalle IP, Inc. v. James, WIPO Case No. D2018-0009 (“jil” is very similar to and easily mistakable for “jll”); see also WIPO Overview 3.0, at section 1.9, which states that “[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 … Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters ([e.g.], upper vs lower-case letters or numbers used to look like letters).…”.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. The Respondent does not run any business under the name “eu-jil” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered after the Complainant’s JLL trademark. The Panel finds it likely that the Respondent had the Complainant’s JLL trademark in mind when registering the Disputed Domain Name. With respect to the use, passive holding does not prevent a finding of bad faith use.

Furthermore, past UDRP Panels have held that failure to respond to a cease-and-desist letter and to the Complaint may be considered a factor in finding bad faith registration and use of a domain name. See RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242. This is what occurred here.

Finally, the fact that the Respondent is known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is a further indication that the Respondent registered and used the Disputed Domain Name in bad faith. See Bayer Intellectual Property GmbH v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd., WIPO Case No. D2018-2530.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <eu-jil.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: June 7, 2019

¹ In addition to the Disputed Domain Name, the Respondent currently holds registrations for other domain names that incorporate the trademarks of third party brands. The Panel conducted a reverse WhoIs search and found that the Respondent has registered 121 such domain names. Examples of these include <alphalogics-ems.com>, <georgiadiamond.com>, and <kisco-net.net>.