WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kimley-Horn and Associates, Inc. v. Contact Privacy Inc. Customer 1248750236 / Khari Herbert, Josell LLC
Case No. D2020-3515
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 Contact Privacy Inc. Customer 1248750236, Canada / Khari Herbert, Josell LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <kimley--horn.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2020, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 30, 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 Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on January 26, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 2, 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 an American company offering planning, engineering, and design consulting, operating under the KIMLEY-HORN mark. It operates its primary business website at “www.kimley-horn.com,” and is the proprietor of United States Trademark Registration No. 2788474 for KIMLEY-HORN (word mark), registered on December 2, 2003 for services in classes 36 and 42, and United States Trademark Registration No. 4685771 for KIMLEY-HORN (device mark), registered on February 10, 2015 for services in classes 36 and 42.
Respondent registered the disputed domain name on November 24, 2020. It does not resolve to an active website.
The record contains a copy of a cease-and-desist email sent by Complainant to Respondent dated December 8, 2020.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it was founded in 1967 and is one of the nation’s premier, engineering, and designing consulting firms. It has used the KIMLEY-HORN Mark continually since the firm’s founding. It has registered and continually used the <kimley-horn.com> domain name since at least April 12, 1996. The KIMLEY-HORN Mark has acquired a substantial amount of reputation and goodwill in the marketplace, which is demonstrated by numerous recognitions and awards received by Complainant. The disputed domain name is comprised solely of the KIMLEY-HORN Mark with an extra hyphen.
Under the second element, Complainant states that Respondent is not commonly known by the KIMLEY-HORN Mark. Complainant has not authorized Respondent to use the KIMLEY-HORN Mark, nor is Respondent a licensee. Respondent is not actively using the domain name in connection with a bona fide offering of goods or services or for any other purpose. There is no evidence that Respondent is preparing to use the disputed domain name in connection with a legitimate noncommercial use. At the time that Respondent registered the disputed domain name, Complainant had well-established worldwide rights in the KIMLEY-HORN Mark, putting Respondent on constructive notice of Complainant’s rights.
Under the third element, Complainant states that Respondent has registered the disputed domain name in bad faith. Complainant’s KIMLEY-HORN Mark is a highly distinctive trademark that has been in use for nearly 53 years and is well-known. Respondent has no relationship with Complainant and the disputed domain name is confusingly similar, if not identical, to the KIMLEY-HORN Mark. Respondent knew or should have known of Complainant’s rights, and there is no explanation for Respondent’s choice to register the disputed domain name other than to trade off the good will and reputation of Complainant’s KIMLEY-HORN Mark.
Respondent’s passive holding of the disputed domain name demonstrates bad-faith use. Complainant’s Mark has a strong reputation and has been in continuous use for 53 years; Respondent has made no use of the disputed domain name, and Respondent failed to respond to Complainant’s pre-complaint communication. Respondent’s use of a privacy service is further evidence of bad-faith registration and use of the disputed domain name.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(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) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the KIMLEY-HORN Mark through registrations in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s KIMLEY-HORN Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s KIMLEY-HORN Mark in its entirety. The addition of the second hyphen between the words KIMLEY and HORN is an obvious example of typosquatting and does not prevent a finding of confusing similarity with Complainant’s marks, since the disputed domain name is visually virtually identical to Complainant’s Mark. Such a finding is consistent with previous UDRP practice. See WIPO Overview 3.0, section 1.9 and cases cited thereunder, such as Comerica Bank v. Online Management / Registration Private, Domains by Proxy, LLC, WIPO Case No. D2014-1018.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s long-established KIMLEY-HORN Mark with an additional hyphen, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.2.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the KIMLEY-HORN Mark with the permission of Complainant.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case, in particular, the very close proximity of the disputed domain name to Complainant’s Mark, hamper the inference of any rights nor legitimate interests on the part of Respondent.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has 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 the documented out-of-pocket costs directly related to the 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 Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration and use under the Policy. Complainant’s rights in the distinctive KIMLEY-HORN Mark predate the registration of the disputed domain name by more than half a century. It is not credible that Respondent was unaware of Complainant’s well-established mark when it registered the disputed domain name. The non-standard use of the additional hyphen in the disputed domain name demonstrates a deliberate effort to emulate Complainant’s Mark.
Considering all these circumstances, the Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
The Panel finds that Respondent has demonstrated bad faith by passive holding of the disputed domain name. In particular, the Panel finds that Complainant’s trademark has a strong reputation, Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, Respondent has concealed its true identity by using a privacy service, and there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <kimley--horn.com> be transferred to Complainant.
Date: February 17, 2021