WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kimley-Horn and Associates, Inc. v. Jarrod Brennet
Case No. D2020-3431
1. The Parties
Complainant is Kimley-Horn and Associates, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
Respondent is Jarrod Brennet, United States.
2. The Domain Name and Registrar
The Disputed Domain Name <admin-kimley-horn.com> 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 December 16, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name . On December 17, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 8, 2021.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 15, 2021. 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
Complainant is the owner of two United States trademark registrations. Its Registration Number 2,788,474 is for the mark KIMLEY-HORN and was registered on December 2, 2003. Complainant registered a stylized version of its KIMLEY-HORN mark on February 10, 2015, under Registration Number 4,685,771.
The Disputed Domain Name was registered by Respondent on December 2, 2020. At the time of the filing of the Complaint, the Disputed Domain Name failed to resolve to an active website.
5. Parties’ Contentions
Complainant asserts that it was founded in 1967, and is now one of the nation's premier planning, engineering, and design consulting firms offering full services in a wide range of disciplines. Complainant asserts that it adopted and has extensively and continuously used the KIMLEY-HORN trademark since as early as 1967 in connection with the services. Because of Complainant’s extensive, continuous, and substantial investment in and use of its KIMLEY-HORN trademark, Complainant asserts that the mark has acquired a substantial reputation and goodwill in the marketplace, which consumers recognize as belonging exclusively to Complainant. Complainant asserts that it has received a long and distinguished list of third-party awards and recognitions over the years, including being ranked in Fortune magazine’s “100 Best Companies to Work For” and “100 Best Workplaces for Millennials” as well as being the top ranked firm in Civil Engineering News’ “Best Civil Engineering Companies to Work For” ranking. Complainant asserts that these third party awards and recognitions demonstrate consumer recognition of Complainant’s reputation, and the goodwill of its KIMLEY-HORN trademark.
In addition to Complainant’s federally registered trademarks, issued in 2003 and 2015 and discussed above, Complainant asserts that it has registered and continually used the domain name <kimley-horn.com> since at least as early as 1996. Complainant asserts that it also uses this domain name to host email addresses for Complainant’s employees.
Complainant asserts that Respondent registered the Disputed Domain Name on December 2, 2020, and that Respondent attempted a phishing/business email compromise attack on Complainant that very day. Specifically, Complainant asserts that Respondent appears to have gained access to a previous email thread between Complainant’s Vice President and one of Complainant’s customers regarding an outstanding invoice. Complainant asserts that Respondent intercepted the email thread and began corresponding with Complainant’s customer, impersonating the Vice President, and offering the customer a discount on the balance of an outstanding invoice, provided that the customer made the payment by a set deadline through wire transfer to an alleged “investment trust account”. Although Respondent alleged in its phishing email that Complainant owned the account, Complainant asserts that it does not own the account.
Complainant asserts that it filed a phishing abuse complaint with the domain name registrar, which complaint was granted and resulted in suspension of Respondent’s services associated with the Disputed Domain Name.
Complainant asserts that the Disputed Domain Name is confusingly similar to Complainant’s KIMLEY-HORN mark, used since 1967 and federally registered since 2003. Complainant asserts that the Disputed Domain Name is identical to Complainant’s KIMLEY-HORN mark but for the addition of the descriptive term “admin”, which does not avoid confusing similarity.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because Complainant has not authorized Respondent to use Complainant’s mark, Respondent is not a licensee of the mark, and Respondent is not commonly known by the name “Kimley-Horn”. Further, Complainant asserts that Respondent intentionally targeted Complainant’s mark when registering the Disputed Domain Name in order to capitalize on Complainant’s reputation and goodwill to further its phishing/business email compromise attack. Complainant asserts that Respondent’s use of the Disputed Domain Name for this illegal activity can never confer rights or legitimate interests on Respondent.
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because the Disputed Domain Name has been used in furtherance of a phishing/business email compromise attack, which is evidence of bad faith registration and use of the Disputed Domain Name. Complainant asserts that Respondent was clearly aware of Complainant prior to registration of the Disputed Domain Name and that Respondent registered the Disputed Domain Name in bad faith with the intent to use the Disputed Domain Name to impersonate Complainant and its Vice President and to deceive Complainant’s customer in the furtherance of Respondent’s phishing/business email compromise scheme.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) [Respondent has] registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).
1. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name <admin-kimley-horn.com> is confusingly similar to Complainant’s KIMLEY-HORN mark. The Disputed Domain Name reproduces the KIMLEY-HORN mark in its entirety, adding only the descriptive term “admin” and the generic Top-Level Domain (“gTLD”) “.com”. The Panel finds that combining Complainant’s entire mark with the descriptive term “admin” does not avoid a finding of confusing similarity. See Aldi GmbH & Co. KG & Aldi Stores Limited v. Bryer Grote, WIPO Case No. D2020-1815 (<admin-aldi.shop> confusingly similar to ALDI). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element). The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
2. Rights or Legitimate Interests
Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent is not authorized to use Complainant’s mark, that Respondent is not a licensee of the mark, and that Respondent is not commonly known by the name “Kimley-Horn”. Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See Adidas AG v. Domain Manager, WIPO Case No. D2014-1414,WIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. Furthermore, Respondent’s registration and use of the Disputed Domain Name in connection with a phishing/business email compromise attack is not, and cannot create, rights or legitimate interests under the Policy. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774, WIPO Overview 3.0, section 2.13.
As a result, the Panel finds that Complainant has established paragraph 4(a)(ii) of the Policy.
3. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(a)(iii) of the Policy, namely that Respondent has registered and used the Disputed Domain Name – a variation of the mark with “admin” appended – in bad faith. The facts that Respondent committed a phishing attack upon a customer of Complainant using the Disputed Domain Name, and that Respondent committed its phishing attack on the same day Respondent registered the Disputed Domain Name prove that Respondent registered and used the Disputed Domain Name for a bad faith purpose. Moreover, Respondent’s communication to Complainant’s customer reproduced Complainant’s registered stylized mark in its entirety on a dummied-up letterhead, further indicating that Respondent’s use of the Disputed Domain Name was intended to target Complainant in bad faith.
The Panel finds that Complainant has established paragraph 4(a)(iii) of the Policy.
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 <admin-kimley-horn.com> be transferred to Complainant.
Jordan S. Weinstein
Date: January 21, 2021