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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kimley-Horn and Associates, Inc. v. Secoo Gio

Case No. D2021-4189

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 Secoo Gio, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <kimleys-horns.com> (the “Domain Name”) 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 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an Amended Complaint on December 15, 2021 to provide clarification regarding the Domain Name.

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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.

The Center appointed Jeremy Speres as the sole panelist in this matter on January 24, 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

The Complainant has, since its founding in 1967, traded under its KIMLEY-HORN trade mark as a planning, engineering, and design consulting firm offering services in a wide range of disciplines. The Complainant owns registrations in the United States for its mark, the most relevant being registration number 2,788,474 KIMLEY-HORN in classes 36 and 42 with a registration date of December 2, 2003. Additionally, the Complainant owns and has continually used the <kimley-horn.com> domain name since at least as early as April 12, 1996 for its main website.

The Domain Name was registered on September 2, 2021 and, as at the filing of the Complaint and drafting of this Decision, did not resolve to any website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its KIMLEY-HORN mark, that the Respondent has no rights or legitimate interests in it, and the Domain Name was registered and used in bad faith under the doctrine of passive holding given that the Complainant’s mark is well-known, there is no dictionary meaning of the Domain Name that the Respondent might in good faith have sought to adopt and a simple Internet search would have revealed the Complainant’s mark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

A domain name which consists of an obvious misspelling of a trade mark, including through the addition of letters as in this case, is considered to be confusingly similar to the mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.9). The Complainant’s KIMLEY-HORN mark is readily recognizable within the Domain Name, and the additional letters “s”, rendering the Complainant’s mark to its plural form, do not prevent a finding of confusing similarity (see M/s Nalli Chinnasami Chetty v. Nall’'s Silks Sari Centre, WIPO Case No. D2009-0664 where the plural form of a mark was held confusingly similar).

The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has adduced sufficient evidence to establish that its mark was registered and well-known long prior to registration of the Domain Name. The Domain Name is confusingly similar to the Complainant’s mark and the Complainant has certified that the Domain Name is unauthorised by it.

Neither the Complainant’s mark nor the Domain Name bear any semantic value which the Respondent might, in good faith, have sought to adopt. The evidence discussed below in relation to bad faith strongly indicates that the Respondent’s intention was to target the Complainant for phishing or other malicious purposes and may well already have used the Domain Name as such, which cannot confer rights or legitimate interests (WIPO Overview 3.0 at section 2.13). There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain.

The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1).

C. Registered and Used in Bad Faith

The Complainant’s mark is inherently distinctive with no generic meaning, enjoys a reputation and is highly specific to the Complainant. Thus, the Domain Name, consisting of a plural form of the Complainant’s mark, cannot sensibly refer to any other party and this strongly suggests targeting of the Complainant.

The Panel has independently established that the Respondent has a history of cybersquatting, including for purposes of phishing. The Respondent was found to have registered and used a domain name for phishing, tellingly also a domain name consisting of the plural form of the Complainant’s mark, in CommScope, Inc. of North Carolina v. SECOO GIO, FORUM Claim Number FA2105001944599. Additionally, the Panel has independently viewed reverse WhoIs records for other domain names owned by the Respondent and found many that consist of obvious typos, including plural forms, of well-known trade marks. These include <heineken-br.com>, <cainrcrossmartin.com> (see legitimate website at “www.cairncrossmartin.com”), <ecsgroups-aero.com> (see legitimate website at “www.ecsgroup.aero”) and <fearleyns.com> (see legitimate website at “www.fearnleys.com”). The Respondent is clearly a serial cybersquatter and this case is merely a continuation of the Respondent’s modus operandi.

The risk of the Domain Name being used for phishing is a high one given the Respondent’s history. In fact, the Panel has independently established that the Domain Name is listed in two separate reputation block lists for malicious activity. Thus, it seems that the Domain Name is already being used for malicious activity.

The fact that, at the time of lodging the Complaint and drafting of this Decision, the Domain Name did not resolve to any website does not prevent a finding of bad faith under the doctrine of passive holding. For the reasons identified above, all the factors that panels typically consider under that doctrine favour the Complainant (WIPO Overview 3.0 at section 3.3).

The Panel draws adverse inferences from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3), and the provision of false WhoIs details (WIPO Overview 3.0 at section 3.2.1).

The Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name, <kimleys-horns.com>, be transferred to the Complainant.

Jeremy Speres
Sole Panelist
Date: February 7, 2022

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