Complainant is Kimley-Horn and Associates, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
Respondent is lloyd alvin, United States.
The disputed domain name <kimley-horn.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 Complainant on August 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 6, 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 13, 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.
Complainant is a United States company. Since 1967, Complainant has offered planning, engineering, and design consulting services under its KIMLEY-HORN mark. Complainant owns several registrations for the KIMLEY-HORN mark in the United States where Respondent lists an address of record. These include United States Registration No. 2788474 (registered December 2, 2003). Complainant additionally owns the registration for the domain name <kimley-horn.com> (registered April 12, 1996), which Complainant uses as a means to communicate with consumers about services offered under its KIMLEY-HORN mark.
The disputed domain name <kimley-horn.org> was registered on July 28, 2021. The disputed domain name is not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.
Complainant contends that (i) the disputed domain name <kimley-horn.org>, is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the KIMLEY-HORN mark, which has “substantial” reputation and goodwill, and in connection with which Complainant has been recognized with honors and awards by national or international media sources including Forbes, Fortune, and LinkedIn. Complainant contends that Respondent has incorporated Complainant’s well-known KIMLEY-HORN mark into the disputed domain name, with the addition only of the Top-Level Domain (“TLD”), “.org”. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions.
The Panel must first determine whether the disputed domain name <kimley-horn.org> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Panel finds that it is. The disputed domain name incorporates in full Complainant’s KIMLEY-HORN mark. Typically, a TLD may be ignored for purposes of considering this first element. See Compagnie Générale des Etablissements Michelin v. Whois Guard Inc., Whois Guard Protected/Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234. See also Calvin Klein, Inc., Calvin Klein Trademark Trust v. Whois Guard Protected, Whois Guard, Inc./StayU Kasabov, WIPO Case No. D2015-2306.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests”, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
The Panel finds that Complainant has established a prima facie case of Respondent’s lack of “rights or legitimate interests” in the disputed domain name which Respondent has not rebutted. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name for purposes of paragraph (4)(a)(ii) of the Policy.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that passive holding does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview 3.0, section 3.3, which notes that the “non-use of a domain name” does not prevent a finding of bad faith.
Rather, a panel must examine “the totality of the circumstances”, including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals its identity and/or replies to the complaint. Respondent here did not respond to the Complaint, and appears to have concealed its identity. Furthermore, Complainant has demonstrated a fair level of consumer exposure to its KIMLEY-HORN mark, particularly in the United States, where Respondent is apparently located. See, for example, Kimley-Horn and Associates, Inc. v. Jarod Brennet, WIPO Case No. D2020-3431; Kimley-Horn and Associates, Inc. v. Contact Privacy Inc., Customer 1246614033 / Larry William, WIPO Case No. D2020-0661; Kimley-Horn and Associates, Inc. v. Abrahim Hashim, WIPO Case No. DCO2019-0017. Moreover, the Panel finds that the disputed domain name is inherently misleading as it represents an impersonation of Complainant.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph (4)(a)(iii) of the Policy.
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 <kimley-horn.org> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: September 27, 2021