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 Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Jeff Hink, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 October 1, 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 October 1, 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 October 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2021.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on December 6, 2021. The Panel finds that it was properly constituted. The Panel has timely 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 BackgroundThe Complainant is a corporation based in North Carolina, United States, and is active in engineering, planning, design and related services throughout the United States; it was founded in 1967. The Complainant claims a common law trademark for KIMLEY-HORN prior to its registration. In addition the Complainant holds the following United States trademark registrations:
KIMLEY-HORN, Reg. No. 2,788,474, registered on December 2, 2003, and
KIMLEY>>>HORN (stylised version with three arrow logo between the two words), Reg. No. 4,685,771, registered on February 10, 2015.
The Complainant also owns, and states to have used continuously since as early as 1996, the
Little is known of the Respondent whose identity was initially shielded by a privacy service, but who appears to be an individual in the United States named Jeff Hink; the Complaint was, at the Center’s invitation, amended to add Jeff Hink as a Respondent.
The disputed domain name currently resolves to an inactive page.
The disputed domain name was registered on August 18, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it is a well-known and award-winning company in its field, and has built up considerable good will and reputation in its activities, name and trademarks. The Complainant asserts that the disputed domain name is deliberately confusingly similar to its trademarks, and that the Respondent has no rights or legitimate interests in, and has no permission to use, its trademarks. Consequently, the Complainant asserts, the disputed domain name can only have been registered in bad faith, and that in the circumstances here present even the passive holding of the disputed domain name should result in a finding of bad faith use by the Respondent.
The Complainant, through counsel, sent a detailed cease and desist notice to the Respondent on August 10, 2021 concerning the disputed domain name, but received no reply. The Complainant further alleges that the decisions and actions of the Respondent with respect to the disputed domain name are suggestive of an intent to use that disputed domain name for malicious purposes such as phishing or fraud - which the Complainant has been the target of in recent years. This point is, the Complainant maintains, supported by evidence that the Respondent has associated with the mail exchanger record (“MX”) servers with the disputed domain name.
The factual assertions of the Complaint are, as necessary, further discussed in section 6, below.
The Complainant requests that the disputed domain name be transferred to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name begins with and contains the entirety of the Complainant’s trademark (but for the hyphen or separation between “Kimley” and “Horn”) followed by the word “group”; the disputed domain name is confusingly similar with the Complainant’s trademarks, and but for the addition of the word “group” is identical to the Complainant’s long-standing domain name. Moreover, the term “group” after the Complainant’s trademark does little or nothing to diminish this confusing similarity.
The Complainant has, accordingly, met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has clearly asserted that the Respondent has no permission or right to use its trademarks. There is no basis to believe - and it is inherently improbable - that the Respondent is known by the name “kimleyhorngroup”, nor is there any evidence that the disputed domain name has been used in connection with any bona fide offering of goods or services.
UDRP jurisprudence makes clear that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Where such a prima facie case is established by the complainant the burden shifts to the respondent to establish its rights or legitimate interests in the disputed domain name. Where the respondent fails to do so the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. Id.; see also Meizu Technology Co. Ltd v. “osama bin laden”,WIPO Case No. DCO2014-0002.
The Complainant has here established such a prima facie case and the Respondent, having failed to answer the Complaint, has not rebutted it. There is furthermore nothing in the case file that would contradict the Complainant’s assertions as to the Respondent’s lack of any rights or legitimate interests in the disputed domain name.
It follows that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThere is here no basis to believe - that the disputed domain name was chosen and registered by serendipity without knowledge of the Complainant’s rights. There is furthermore no evidence or indicia in the case file that might indicate a good faith purpose in such registration, or for the Respondent’s actions in general. See WIPO Overview 3.0, section 3.1.1. It is, accordingly, here difficult to see how the disputed domain name could have been registered and used for any good faith purpose.
This conclusion holds even though the disputed domain name has not thus far been actively used. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
While the Complainant’s assertion that the Respondent was likely involved in phishing or fraud is not definitively proven it is indicia of bad faith purpose, as are the Respondent’s failure to file a Response or reply to a cease and desist letter containing detailed allegations that are consistent with the Complaint here.
The apparent desire of the Respondent to hide behind a privacy service is further indicia of a bad faith purpose.
A proper analysis of the totality of the circumstances in this matter can only lead to a conclusion of bad faith on the part of the Respondent, and a finding that the Respondent has registered and used the disputed domain name in bad faith within the meaning of 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
Nicolas Ulmer
Sole Panelist
Date: December 10, 2021