WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Lang LaSalle IP, Inc. v. LiuHu Peng

Case No. D2019-3075

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 LiuHu Peng, China.

2. The Domain Name and Registrar

The disputed domain name <jll-box.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 31, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 31, 2019, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 2, 2020. The Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint in English on January 6, 2020.

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 January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 11, 2020. 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 part of the JLL group, which is a professional services and investment management firm specializing in real estate. The JLL group was formed by the merger of Jones Lang Wootton and LaSalle Partners in 1999. Since 2014, the JLL group has officially marketed itself under the name “JLL”. The Complainant is the owner of multiple trademark registrations for JLL in multiple jurisdictions, including Chinese trademark registrations numbers 10453827, 10453828 and 10453829, all registered from March 28, 2013 and variously specifying services in classes 36, 37, and 42 including urban planning services, building consulting services and real estate-related financial management services. Those trademark registrations remain current. The JLL group has registered and uses various domain names that incorporate the JLL trademark, including <jll.com>. Since 2017, the Complainant has collaborated with Box, Inc., a cloud content management and file sharing service for businesses. Together, they provide services via the subdomain <jll.account.box.com>.

The Respondent is an individual resident in China.

The disputed domain name was registered on August 15, 2019. It does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s JLL trademark. The disputed domain name is a combination of the Complainant’s JLL trademark and the BOX trademark registered by Box, Inc., together with the addition of a hyphen between the two trademarks. The Respondent has added the generic, descriptive term “box” to the Complainant’s JLL trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The Respondent is currently using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content.

The disputed domain name was registered and is being used in bad faith. The Complainant’s JLL trademark is known internationally and its trademark registrations predate the Respondent’s registration of the disputed domain name. By including the term “box” along with a hyphen and the JLL trademark, the Respondent has demonstrated a clear knowledge of the Complainant and its collaboration with Box, Inc. making it illogical to believe that the Respondent registered the disputed domain name without specifically targeting the Complainant. The disputed domain name resolves to an inactive site and can only be taken as intending to cause confusion among internet users as to the source of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that: the Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; the disputed domain name is comprised of Latin characters and the dominant portions of the disputed domain name do not carry any specific meaning in Chinese.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The disputed domain name also contains an English word, i.e. “box”. The Respondent has not expressed any interest in commenting on the language of the proceeding, responding to the Complaint, or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the JLL mark.

The disputed domain name wholly incorporates the JLL trademark as its initial element. The disputed domain name also includes the dictionary word “box” but, as a mere dictionary word, this does not dispel the confusing similarity between the disputed domain name and the Complainant’s trademark. The disputed domain name also includes a hyphen after “jll”, which serves to make the trademark even more clearly recognizable within the disputed domain name.

The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, i.e. “.com”. As a mere technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances, the disputed domain name does not resolve to any active website. The Panel does not find that this is a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “LiuHu Peng”, not “jll-box”. There is no evidence that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the disputed domain name was registered in 2019, years after the registration of the Complainant’s JLL trademark. The disputed domain name wholly incorporates the JLL trademark as its initial element. The Complainant has acquired a considerable reputation in its JLL mark due to its extensive use in connection with its services. The Complainant also provides services in collaboration with Box, Inc. The disputed domain name combines the Complainant’s JLL mark with the word “box”. If anything, this word increases the likelihood of confusion because the combination of “jll” and “box” may refer to services offered by the collaboration between the Complainant and Box, Inc. The Panel considers it unlikely that this is a coincidence and draws the inference that the Respondent was aware of the Complainant and targeted its JLL mark. Therefore, the Panel finds that the disputed domain name was registered in bad faith.

With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present case, the disputed domain name wholly incorporates the JLL trademark as its initial element, combining that mark with the element “-box”, which may be understood as a reference to the services offered by the Complainant in collaboration with Box, Inc. The Respondent offers no explanation for its intended use of the disputed domain name, and its potential use by the Respondent remains a continuing threat to the interests of the Complainant. In all these circumstances, the Panel considers it more likely than not that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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-box.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 21, 2020