The Complainant is Cintas Corporation, United States of America, represented by Keating Muething & Klekamp PLL, United States of America.
The Respondent is Domain Admin, Hush Whois Protection Ltd, Seychelles.
The disputed domain name <shopmycintas.com> (“Disputed Domain Name”) is registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 9, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 16, 2019. 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.
The Complainant is a publicly traded American company that designs, manufactures and supplies a wide range of specialized products and services to over 1 million customers. The Complainant operates over 400 facilities across North America, including six manufacturing plants and eight distribution centers, and employs over 40,000 people.
The Complainant is the owner of numerous trade mark registrations for the CINTAS word and device marks in the United States, including, inter alia, registration No. 985550 of June 4, 1974, in international class 25, and registration No. 1003590 of January 28, 1975, in international class 37. The Complainant also owns various trade mark registrations for the CINTAS word and device marks outside the United States, including, inter alia, Canada, Hong Kong, European Union, etc.
The Complainant also owns the following domain names: <cintas.com>, which resolves to the Complainant’s main official website and was registered on August 19, 1995; <mycintas.com>, registered on November 12, 1999; and <shopcintas.com>, registered on October 17, 2002.
The actual identity of the Respondent is unknown. The Disputed Domain Name was registered by the Respondent on January 18, 2016, through a privacy shield and currently resolves to a parking page comprising pay-per-click links.
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark CINTAS, which has been wholly incorporated into the Disputed Domain Name with the addition of the descriptive words “my” and “shop”;
(b) the Complainant has never authorised or given permission to the Respondent to use its CINTAS mark, and the Respondent has not produced any evidence of its use, or of demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(c) the reputation of the Complainant’s trade mark, combined with the fact that the Disputed Domain Name resolves to a page containing pay-per-click links, support the fact that the Respondent is acting in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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 by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the CINTAS trade mark, based on its various trade mark registrations. The Disputed Domain Name incorporates the Complainant’s CINTAS mark in its entirety, with the mere addition of the words “my” and “shop”. The mere addition of the foregoing descriptive terms does not have the effect of distinguishing the Disputed Domain Name from the Complainant’s CINTAS mark and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s CINTAS trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy see section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the CINTAS mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the CINTAS mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
The Disputed Domain Name resolves to a parking page comprising pay-per-click links that contain references to the Complainant’s CINTAS mark as well as goods and services related to the Complainant’s business. This suggests that the Respondent is using the Disputed Domain Name to capitalize on the reputation and goodwill of the Complainant’s trade mark. There is no evidence to suggest that the Disputed Domain Name has been used in connection with any legitimate non-commercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. The Panel therefore accepts the Complainant’s contention that the Respondent’s use of the Disputed Domain Name to host a parking page comprising pay-per-click links does not represent a bona fide offering of goods or services see section 2.9 of WIPO Overview 3.0.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith see section 3.1.4 of the WIPO Overview 3.0.
The Complainant’s CINTAS mark is well-known, and a quick Internet search shows that the top search results returned for “CINTAS” are the Complainant’s official website and affiliated social media pages. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been fully aware of the Complainant and that the Disputed Domain Name incorporated the Complainant’s CINTAS mark. The fact that the Disputed Domain Name incorporates the Complainant’s CINTAS mark in its entirety already creates a presumption of bad faith.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith:
(i) the Disputed Domain Name resolves to a parking page comprising pay-per-click links that are related to the Complainant’s business, which indicates that the Respondent intentionally registered the Disputed Domain Name for its own commercial gain by creating a likelihood of confusion with the Complainant’s CINTAS mark;
(ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(iii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal their identity in the WhoIs records; and
(iv) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given the Disputed Domain Name is at least confusingly similar to the Complainant’s CINTAS mark and registered domain names <cintas.com>, <mycintas.com> and <shopcintas.com>. Any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with the Complainant, particularly given that the Disputed Domain Name is essentially an amalgamation of two of the other domain names owned by the Complainant, and is almost identical to the Complainant’s sub-domain <shop.cintas.com>.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <shopmycintas.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: October 21, 2019