Jones Lang LaSalle IP, Inc. v. James cole / James LTD
Claim Number: FA1903001833719
Complainant is Jones Lang LaSalle IP, Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is James cole / James LTD (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jlll.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on March 13, 2019; the Forum received payment on March 13, 2019.
On March 13, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <jlll.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jlll.us. Also on March 15, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Jones Lang LaSalle IP, Inc., is a professional services and investment management firm specializing in real estate. Complainant has rights in the JLL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,564,654, registered July 8, 2014). Respondent’s <jlll.us> domain name is confusingly similar to Complainant’s mark because Respondent includes the JLL mark in the domain name, adds one letter ‘l’ and the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <jlll.us> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant’s President and CEO in order to phish for Complainant’s employees’ personal or financial information.
Respondent registered and uses the <jlll.us> domain name in bad faith. First, Respondent engages in a pattern of bad faith registration of domain names infringing on other famous marks. Second, Respondent attempts to attract users for commercial gain by creating a likelihood of confusion between Complainant’s mark and Respondent’s website. Third, Respondent uses the disputed domain name for an email address through which Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme. Fourth, Respondent engages in typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the JLL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <jlll.us> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the JLL mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides printouts of its USPTO registrations for the JLL mark (e.g., Reg. No. 4,564,654, registered July 8, 2014). The Panel finds that Complainant has rights in the JLL mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <jlll.us> domain name is confusingly similar to Complainant’s mark because Respondent wholly incorporates the JLL mark in the domain name and adds a single letter and a ccTLD. Such changes are typically insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Here, Respondent incorporates the JLL mark in its entirety in the domain name, adds one letter ‘l’ and adds a “.us” ccTLD. The Panel finds that Respondent’s <jlll.us> domain name is confusingly similar to Complainant’s JLL mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <jlll.us> domain name because Complainant has not authorized Respondent to use its JLL mark. Where a response is lacking, relevant WHOIS information may be used to identify the respondent under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS information of record identifies Respondent as “James cole / James LTD,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. The Panel finds that Respondent lacks rights and legitimate interests in respect of the <jlll.us> domain name under Policy ¶ 4(c)(iii).
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel finds that Respondent has not satisfied Policy ¶ 4(c)(i).
Complainant contends that Respondent does not use the <jlll.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent passes off as Complainant via email. Passing off using an email address associated with a disputed domain name may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Here, Complainant claims that Respondent uses the disputed domain name to send emails to Complainant’s employees where Respondent passes itself off as Complainant’s President and CEO. The Panel finds Respondent fails to use the <jlll.us> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant argues that Respondent does not use the <jlll.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to phish for Complainant’s employees’ personal or financial information. Such use is not considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel finds that that Respondent fails to use the <jlll.us> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant has proved this element.
Complainant argues that Respondent has engaged in a pattern of bad faith registration and use based on Respondent’s registration of multiple domain names infringing on other famous marks. Evidence that a Respondent habitually registers domain names obviously infringing on famous marks may establish a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Here, Complainant alleges that Respondent owns over 100 cybersquatted domain names, and provides WHOIS information showing Respondent as the registrant of the <aut0desk.us>, <c1trix.us>, <nasdaqq.us>, and <verlsign.us> domain names. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered and uses the <jlll.us> domain name as part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <jlll.us> domain name in bad faith because Respondent uses the disputed domain to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a disputed domain name to confuse users for commercial gain may evince bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Here, Complainant claims that Respondent uses a confusingly similar domain name to divert users to its website and profits from this diversion by hosting pay-per-click links. The Panel finds that Respondent registered and uses the <jlll.us> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the <jlll.us> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant via email in order to phish for users’ personal or financial information. Such use may evince bad faith generally under Policy ¶ 4(a)(iii). See CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc, FA 1764186 (Forum Feb. 2, 2018) (“Respondent sent email to users seeking employment at Complainant’s business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent’s emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).”). Complainant provides a printout of an email allegedly sent by Respondent. The Panel finds that Respondent registered and uses the <jlll.us> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant alleged that Respondent engages in typosquatting. Typosquatting may evince bad faith generally under Policy ¶ 4(a)(iii). See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant claims that the <jlll.us> domain name is typosquatted because it was “designed to closely mimic Complainant’s trademark and primary domain.” The Panel agrees and finds that Respondent registered and uses the <jlll.us> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the JLL mark prior to registering the <jlll.us> domain name. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through evidence of the respondent’s use of it. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also Thomson Reuters Global Resources Unlimited Company v. Gabe Berger, FA1901001825921 (Forum Feb. 20, 2019) (“Typosquatting necessarily implicates another factor that has, by itself, often been held by UDRP panels to constitute bad faith. It is evident from the close similarity between Complainant’s mark and the Domain Names that Respondent had actual knowledge of Complainant’s mark in October 2018, when it registered the Domain Names.”). Here, Complainant cites Respondent’s alleged fraudulent email activities as well as Respondent’s alleged typosquatting. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the JLL mark prior to registering the <jlll.us> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <jlll.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 9, 2019
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