Kimley-Horn and Associates, Inc. v george cantonis

WIPO Case No. D2022-3793

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Kimley-Horn and Associates, Inc. v. george cantonis

Case No. D2022-3793

1. The Parties

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 george cantonis, United States.

2. The Domain Name and Registrar

The disputed domain name <kimley-horna.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2022.
On October 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 11, 2022, 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 (Privacy Service Provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to Complainant on October
18, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting
Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 19,

2022.

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 October 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2022. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on November 11, 2022.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on November 17, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Among Complainant’s trademark registrations is United States Trademark Registration Number 2,788,474 for the service mark KIMLEY-HORN, in International Classes 36 and 42, registered on December 2, 2003, and with a January 1, 1994 first use in commerce.

The disputed domain name was registered September 19, 2022, and does not route to an active webpage.

5. Parties’ Contentions

A. Complainant

Complainant avers that it has continuously used the KIMLEY-HORN marks for its very large planning, engineering and design consulting firm since 1967.

Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s KIMLEY-HORN trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.

Complainant also relates that it has been subject to various phishing and business email compromise
(“BEC”) scheme attacks over the past few years, some of which culminated in Complainant bringing
successful UDRP proceedings against the perpetrators.

In support of its positions on rights or legitimate interests and bad faith in this proceeding, Complainant avers that it is “more likely than not that Respondent registered the [disputed] Domain Name with the intention to confuse or defraud Complainant’s employees, clients, or partners via use of the [disputed] Domain Name in connection with a phishing scheme or a BEC attack.”[1]

On the above grounds, Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

[1] Complainant avers that the disputed domain name is associated with an email server, providing one exhibit supporting that averment. 2 In its rulings on rights and legitimate interests and bad faith under the Policy, the Panel declines to rely on the Complaint’s allegations

6. Discussion and Findings

A. Notification of Proceedings

The Center attempted to send Respondent notification of these proceedings by courier, fax and email, using the contact information provided by the Registrar. The notifications were not deliverable.

The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.

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B. Substantive Rules of Decision

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted
and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i)           the disputed domain name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii)          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.

Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The
Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the
Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp
USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,

WIPO Case No. D2000-0009).

C. Identical or Confusingly Similar

The Panel agrees with Complainant’s allegation that the disputed domain name <kimley-horna.net> is confusingly similar to Complainant’s KIMLEY-HORN marks.

Panels commonly disregard Top Level Domain (“TLD”) suffixes in determining whether a disputed domain
name is identical or similar to a complainant’s marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-
Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case
No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel
Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

Omitting the “.net” TLD from the disputed <kimley-horna.net> domain name, the Panel notes that the entire that the addition of that single letter does not prevent a finding of confusing similarity.

The Panel therefore rules that the disputed domain name is confusingly similar to Complainant’s marks. See complainant’s marks where the disputed domain names fully incorporate a complainant’s marks).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.7 (“WIPO

The Panel concludes that the first element of paragraph 4(a) of the Policy is established.

D. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

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The Panel accepts the Complaint’s undisputed allegations that Respondent has no authorization or license to use its trademarks in the disputed domain name. The Panel further accepts the Complaint’s allegations that Respondent is not commonly known by the disputed domain name.

Since the record indicates that the disputed domain name does not route to an active webpage, the Panel finds that Respondent is not making a bona fide use of the disputed domain name. In light of the Complaint’s allegations and the evidence, the Panel holds that Respondent is not making a legitimate or fair use of the disputed domain name.

Complainant establishes a prima facie case. Omitting to submit a response, Respondent has neither contested nor rebutted that prima facie case.

The Panel holds, therefore, that Respondent has no rights or legitimate interests in use of the disputed domain name.

E. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.

UDRP panels may draw inferences about bad faith in light of the circumstances, including passive holding,
failure to respond to a complaint and other circumstances. E.g., Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.2.1.

Respondent was undoubtedly aware of Complainant’s distinctive KIMLEY-HORN mark, which had been registered and enjoyed widespread use for many years before Respondent registered its confusingly similar disputed domain name. The Panel finds that Respondent deliberately included the mark in the disputed domain name to create confusion or unfairly to exploit the value of Complainant’s marks.

Respondent’s failure to maintain accurate contact details as required in the Registrar’s registration agreement and passive holding of the disputed domain name are cumulative evidence of bad faith.

Accordingly, the Panel concludes that paragraph 4(a)(iii) of the Policy is satisfied.2

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 <kimley-horna.net> be transferred to Complainant.

/Jeffrey D. Steinhardt/
Jeffrey D. Steinhardt
Sole Panelist
Date: December 1, 2022

respecting potential preparations by Respondent for phishing or BEC schemes directed at Complainant. The Complaint’s evidence on
this point is somewhat limited and ample other circumstances support the Panel’s conclusions above.