Complainant is Kimley-Horn and Associates, Inc., United States of America, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Swickard Management Company, United States of America.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 August 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended to the Complaint. Complainant filed an amended Complaint on August 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 Respondent of the Complaint, and the proceedings commenced on August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 15, 2021.
The Center appointed Richard W. Page as the sole panelist in this matter on September 20, 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 BackgroundFounded in 1967, Complainant is one of the nation’s premier planning, engineering, and design consulting firms offering full services in a wide range of disciplines.
Since at least as early as 1967, when the firm was founded, Complainant adopted and has extensively and continuously use the KIMLEY-HORN mark in connection with the marketing, advertising, promotion, and provision of Complainant’s planning, engineering, and design consulting firm services.
Complainant owns the following federal trademark registrations in the United States of America: KIMLEY-HORN No. 2,788,474 registered December 2, 2003 in financial analysis and consultation services; and KIMLEY >>> HORN (stylized) No. 4,685,771 registered on February 10, 2015 in engineering consultation; design for others in the field of engineer, etc. Additionally, Complainant owns and has continually used the
The Disputed Domain Name was registered on July 27, 2021.
5. Parties’ Contentions A. ComplainantComplainant contends that the Disputed Domain Name is confusingly similar to the KIMLEY-HORN mark, pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that, because of its extensive, continuous and substantial investment in and use of the KIMLEY-HORN mark, it has acquired a substantial amount of reputation and goodwill in the marketplace, which consumers recognize as belonging exclusively to Complainant. Complainant further contends that consumer recognition of said reputation and goodwill is further demonstrated by the long and distinguished list of third-party awards and recognitions Complainant and Complainant’s employees have received over the years, including but not limited to, 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 further contends that to fully protect the above-discussed reputation and goodwill associated with the KIMLEY-HORN Mark, Complainant applied for and owns the following federal trademark registrations in the United States of America: KIMLEY-HORN No. 2,788,474 registered December 2, 2003 in financial analysis and consultation services; and KIMLEY >>> HORN (stylized) No. 4,685,771 registered on February 10, 2015 in engineering consultation; design for others in the field of engineer, etc. Complainant also claims common law rights which together with the trademark registrations are referred to as “the KIMLEY-HORN Mark” in the Complainant’s contentions.
To the best of Complainant’s knowledge, since the day Respondent registered the Disputed Domain Name, the Disputed Domain Name has been used to host a website featuring sponsored pay-per-click advertisements. To express Complainant’s concerns, Complainant sent a cease and desist email to Respondent via the anonymized email address provided in the WhoIs records. However, Complainant received notification that the email was undeliverable.
Complainant further contends that at least as of July 30, 2021, Respondent had previously associated the Disputed Domain Name with email servers. This is relevant because Complainant has been the target of multiple phishing/business email compromise attacks over the past two (2) years.
Complainant further contends that it has not authorized Respondent to use the KIMLEY-HORN Mark. Long prior to registration of the Disputed Domain Name, Complainant obtained United States federal trademark registrations for the KIMLEY-HORN and the KIMLEY >>> HORN (stylized) trademarks. Complainant’s United States of America federal registrations for the KIMLEY-HORN Mark are incontestable. As such, the certificates of registration constitute conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the registered mark in commerce.
Complainant further contends that having establish prior existing right in the KIMLEY-HORN Mark, the critical inquiry under the first element of the Policy is whether the KIMLEY-HORN Mark and the Disputed Domain Name, when directly compared, are identical or confusingly similar. Here the Disputed Domain Name is unquestionably identical to Complainant’s KIMLEY-HORN Mark as the Disputed Domain Name is comprised solely of the pluralized version of the KIMLEY-HORN Mark. The KIMLEY-HORN Mark consists solely of distinctive surnames and not of dictionary terms.
Complainant further contends that the Disputed Domain Name is confusingly similar to the KIMLEY-HORN Mark and to Complainant’s
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy. Complainant further alleges that Respondent lacks such rights and interests because: (i) Respondent is not commonly known by the name Kimley-Horn; (ii) Complainant has not authorized Respondent to use the KIMLEY-HORN Mark; (iii) Respondent is not a licensee of the KIMLEY-HORN Mark; and (iv) Respondent’s registration of the Disputed Domain Name, which is identical to the KIMLEY-HORN Mark, was done intentionally to confuse and mislead Internet users by trading off Complainant’s trademark rights.
Complainant further alleges that Respondent cannot assert that it has been using the Disputed Domain Name prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparations to do the same in accordance with paragraph 4(c)(i) of the Policy. To the best of Complainant’s knowledge, Respondent has passively held the Disputed Domain Name since its registration and Respondent has always used the Disputed Domain Name to resolve to the website featuring pay-per-click sponsored advertisements for third-party services completely unrelated to Complainant’s services. It is clear from Respondent’s use of the Disputed Domain Name that Respondent’s sole intent is to attract visitors to the website based on initial-interest confusion with Complainant’s well-known KIMLEY-HORN Mark for Respondent’s own financial gain. Such use of the Disputed Domain Name does not amount to a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy. The use of the Disputed Domain Name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the KIMLEY-HORN Mark or otherwise mislead Internet users.
Furthermore, the fact that Respondent is using the Disputed Domain Name to host the website which contains sponsored advertisements is, by its very nature, commercial and Respondent cannot claim to be using the Disputed Domain Name in connection with a legitimate or noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant asserts that Respondent’s bad faith registration of the Disputed Domain Name is clear. As detailed above, (1) the KIMLEY-HORN Mark has been in use for at least the past fifty-four (54) years and is well known as belonging exclusively to Complainant, (ii) Respondent is not commonly known by the Disputed Domain Name, (iii) Respondent does not have a relationship with Complainant or with the KIMLEY-HORN Mark, (iv) the Disputed Domain Name is identical to the KIMLEY-HORN Mark, (v) Respondent knew or should have known of Complainant’s trademark, which rights in the KIMLE-HORN Mark were registered with the sole intent to create initial interest confusion in order to drive visitors to the Disputed Domain Name for Respondent’s own financial gain, and (vi) Respondent appears to have provided false contact information.
Complainant further asserts that Swickard Management Company, appears to be a Honda dealership located in Gladstone, Oregon. The phone number for the Swickard dealership is in the 503-area code. The phone number listed in the WhoIs information is for a telephone number in the 715-area code, which area code is for Wisconsin. It is more likely than not, that Respondent is not in fact Swickard Management Company, but rather, is falsely claiming to be Swickard Management Company to shield Respondent’s true identity and Respondent’s apparent provision of false contact information is yet one more factor establishing Respondent’s bad faith registration and use of the Disputed Domain Name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the trademarks in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarComplainant contends that the Disputed Domain Name is confusingly similar to its trademarks, pursuant to paragraph 4(a)(i) of the Policy.
Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of a complainant having enforceable rights in the mark.
Complainant owns the following federal trademark registrations in the United States of America: KIMLEY-HORN No. 2,788,474 registered December 2, 2003; and KIMLEY >>> HORN (stylized) No. 4,685,771 registered on February 10, 2015.
Respondent has not contested Complainant’s claims to registrations of its marks. Therefore, the Panel finds that Complainant has enforceable trademark rights for purposes of this proceeding.
Complainant contends that the Disputed Domain Name is identical to its marks, except for the addition of the letter “s” to make a pluralized version. Complainant notes that its marks consist solely of distinctive surnames and not of dictionary terms.
Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also see section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see section 1.11.1 of the WIPO Overview 3.0 instructs that Top-Level-Domains (“TLDs”) such as “.com” may be disregarded for purposes of assessing confusing similarity.
The Panel finds that the Disputed Domain Name is identical to and confusingly similar with the KIMLEY-HORN mark. Therefore, Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s marks.
Complainant contends that Respondent lacks such rights and interests because: (i) Respondent is not commonly known by the name Kimley-Horn; (ii) Complainant has not authorized Respondent to use the KIMLEY-HORN Mark; (iii) Respondent is not a licensee of the KIMLEY-HORN Mark; and (iv) Respondent’s registration of the Disputed Domain Name, which is identical to the KIMLEY-HORN Mark, was done intentionally to confuse and mislead Internet users by trading off Complainant’s trademark rights.
Complainant further contends that Respondent cannot assert that it has been using the Disputed Domain Name prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparations to do the same in accordance with paragraph 4(c)(i) of the Policy. To the best of Complainant’s knowledge, Respondent has passively held the Disputed Domain Name since its registration and Respondent has always used the Disputed Domain Name to resolve to the website featuring pay-per-click sponsored advertisements for third-party services completely unrelated to Complainant’s services. It is clear from Respondent’s use of the Disputed Domain Name that Respondent’s sole intent is to attract visitors to the website based on initial-interest confusion with Complainant’s well-known KIMLEY-HORN Mark for Respondent’s own financial gain. Such use of the Disputed Domain Name does not amount to a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy. The use of the Disputed Domain Name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the KIMLEY-HORN Mark or otherwise mislead Internet users.
Complainant further contends that Respondent has not been commonly know by the Disputed Domain Name, hence cannot qualify for paragraph 4(c)(ii) of the Policy.
Furthermore, the fact that Respondent is using the Disputed Domain Name to host the website which contains sponsored advertisements is, by its very nature, commercial and Respondent cannot claim to be using the Disputed Domain Name in connection with a legitimate or noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
The Panel finds that Complainant has made a prima facie showing which has not been refuted by Respondent. Therefore, Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant has alleged above, that Respondent is using the Disputed Domain Name to host the website which contains sponsored advertisements is, by its very nature, commercial.
The Panel finds that Complainant has proven the elements of paragraph 4(b)(iv) of the Policy and, therefore, satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Richard W. Page
Sole Panelist
Date: October 4, 2021