The Complainant is Kimley-Horn and Associates, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
The Respondent is jilin Yang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 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 the same day 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 in English on June 21, 2021. On June 18, 2021, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on June 21, 2021. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on June 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 22, 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 The Complainant is a planning, engineering, and design consulting firm founded in 1967. It owns various trademarks including United States trademark registration number 2,788,474 for KIMLEY-HORN, registered on December 2, 2003, with a claim of first use in commerce on January 1, 1994, specifying services in classes 36 and 42. That trademark registration remains current. The Complainant has registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on December 16, 2020. It resolves to a website in Chinese that displays pornography and links to pornographic, prostitution and gambling websites. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s KIMLEY-HORN trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized Respondent to use the KIMLEY-HORN mark. The Respondent is not a licensee of the KIMLEY-HORN mark. Moreover, Respondent is not commonly known by the name “Kimley-Horn”. The disputed domain name was registered intentionally to trade off the goodwill associated with the KIMLEY-HORN mark in order to drive Internet traffic to the Respondent’s website for the sole purpose of Respondent’s own financial gain. The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered after the Complainant obtained rights in the KIMLEY-HORN mark and it was registered and is being used for the sole purpose of attracting Internet traffic to the Respondent’s website based on the goodwill associated with the KIMLEY-HORN mark, when the website features pornographic and gambling content, most likely for the Respondent’s financial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name contains a trademark in English; the associated website is hosted in the United States by a company whose terms of service are in English, from which it can be inferred that the Respondent is able to understand English; and translation of the Complaint would place an unnecessary burden on the Complainant and create an undue delay. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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 Based on the evidence submitted, the Panel finds that the Complainant has rights in the KIMLEY-HORN mark. The disputed domain name incorporates the name “Kimley”, which is the dominant feature of the KIMLEY-HORN mark. The disputed domain name adds the element “apps”, which is an abbreviation of the word “applications”. Given that the dominant feature of the KIMLEY-HORN trademark remains clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this abbreviation prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8. The disputed domain name includes a generic Top-Level Domain (“gTLD”) suffix “.com”, which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances above, the disputed domain name, which incorporates the dominant feature of the KIMLEY-HORN mark, resolves to a website displaying pornography and links to pornographic, prostitution and gambling websites. The Complainant submits that it has not authorized Respondent to use the KIMLEY-HORN mark nor is the Respondent a licensee of that mark. The website operates for the commercial gain of the Respondent, if he is paid to direct traffic to the linked sites, or for the commercial gain of the operators of the linked sites, or both. In each scenario, this is a use for commercial gain. Accordingly, the Panel does not consider that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Nor is he making a legitimate noncommercial or fair use of the disputed domain name. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “jilin Yang”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain name was registered in 2020, many years after the registration of the Complainant’s KIMLEY-HORN trademark. The disputed domain name incorporates “Kimley”, the dominant feature of the KIMLEY-HORN mark, and combines it with the abbreviation “apps”. “Kimley” is not a dictionary word but an uncommon family name. The Complainant has long used its trademark on its website and it has developed a mobile application. The disputed domain name gives the impression that it will resolve to a site about applications developed by the Complainant. However, nothing on the Respondent’s website has any connection to the Complainant, to the name Kimley, nor to any applications. The Respondent provides no explanation for his choice to include “Kimley” in the disputed domain name. Therefore, the Panel finds it more likely than not that the Respondent had the Complainant’s KIMLEY-HORN mark in mind when he registered the disputed domain name. With respect to use, the disputed domain name resolves to a website displaying pornography and links to pornographic, prostitution and gambling websites. The website has nothing to do with the Complainant. For the reasons given in Section 6.2B above, the Panel finds that the website operates for commercial gain. Given these circumstances, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name Matthew Kennedy
Sole Panelist
Date: August 4, 2021
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