WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kimley-Horn and Associates, Inc. v. Contact Privacy Inc. Customer 12411148268 / John Hayden
Case No. D2021-4188
1. The Parties
The Complainant is Kimley-Horn and Associates, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Contact Privacy Inc. Customer 12411148268, Canada / John Hayden, United States.
2. The Domain Name and Registrar
The disputed domain name <kimleyhorn.company> (the “Disputed Domain Name”) 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 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 15, 2021, 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 the Complainant on December 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2021.
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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2022.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 7, 2022. 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
Founded in 1967, the Complainant is one of the premier planning, engineering, and design consulting firms in the United States, offering full services in a wide range of disciplines. Since its founding, the Complainant extensively and continuously used the KIMLEY-HORN common law trademark. The Complainant also owns and has used the following incontestable trademark registrations for the KIMLEY-HORN trademark with the United States Patent and Trademark Office (“USPTO”): KIMLEY-HORN (word mark), United States Registration No. 2,788,474, registered on December 2, 2003, in international classes 36 and 42; and KIMLEY>>>HORN (stylized mark), United States Registration No. 4,685,771, registered on February 10, 2014, in international classes 36 and 42 (the common law and federally registered KIMLEY-HORN trademarks are hereinafter collectively referred to as the “KIMLEY-HORN Mark”).
The Complainant adopted and has extensively and continuously used the KIMLEY-HORN Mark in connection with the marketing, advertising, promotion, and provision of the Complainant’s planning, engineering, and design consulting firm services. Due to its extensive, continuous, and substantial investment in and use of the trademark in commerce, the Complainant’s KIMLEY-HORN Mark has acquired a substantial amount of goodwill in the marketplace.
Further, the Complainant owns and has continually used the <kimley-horn.com> domain name since at least as early as April 12, 1996. The domain name resolves to the Complainant’s official website and also uses it to host email addresses for the Complainant’s employees.
The Disputed Domain Name was registered on September 23, 2021 and resolves to a landing page with no substantive content that states: “This site can’t be reached. Kimleyhorn.company’s server IP address could not be found.” The Complainant alleges that the Respondent connected the Disputed Domain Name to mail exchanger (“MX”) servers, purportedly to use the Disputed Domain Name as part of a phishing scheme to defraud the Complainant or its clients, although the Complainant has not submitted any evidence of phishing by the Respondent.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s KIMLEY-HORN Mark;
- 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; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
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) 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
Paragraph 4(a)(i) of the Policy requires a two-fold inquiry, a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the KIMLEY-HORN Mark.
It is uncontroverted that the Complainant has established rights in the KIMLEY-HORN Mark based on its years of use as well as its registered trademarks for the KIMLEY-HORN Mark with the USPTO in the United States. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the KIMLEY-HORN Mark.
The Disputed Domain Name consists of the KIMLEY-HORN Mark in its entirety, except omitting the hyphen, followed by the generic Top-Level Domain (“gTLD”) “.company”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition (or omission) of other terms. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the omission of a dash or hyphen. In cases involving slight differences in punctuation or spelling, UDRP panels regularly find sufficient similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 (finding the domain name <adipexp.com> confusingly similar to the trademark ADIPEX-P because they are “pronounced in the same way despite the removal of the dash”). As stated in Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, “[p]anels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark”.
Finally, the addition of a gTLD such as “.company” 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 and WIPO Overview 3.0, section 1.11. Thus, the Panel finds that he Disputed Domain Name is confusingly similar to the Complainant’s KIMLEY-HORN Mark.
Accordingly, the Panel finds that 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 has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to rebut this by demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s KIMLEY-HORN Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c).
Moreover, the Panel finds that the nature of the Disputed Domain Name carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that reproduces a widely known trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, can by itself create a presumption of bad faith. Based on the circumstances here, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s KIMLEY-HORN Mark.
Second, the Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its KIMLEY-HORN Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark”).
Third, the Disputed Domain Name was registered years after the Complainant first began using its KIMLEY-HORN Mark. The Panel finds that the Respondent had the Complainant’s KIMLEY-HORN Mark in mind when registering the Disputed Domain Name.
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent does not prevent a finding of bad faith. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Here, the Disputed Domain Name currently resolves to an inactive landing page with no content, thus demonstrating bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <kimleyhorn.company> be transferred to the Complainant.
Lynda M. Braun
Date: February 21, 2022