The Complainant is Cintas Corporation, United States of America (“United States”), represented by Keating Muething & Klekamp PLL, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Scott Roberts, United States.
The disputed domain name <cintasshirts.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 5, 2020, 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 August 11, 2020 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 August 11, 2020.
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 August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 30, 2020. 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 designs, manufactures, and implements corporate identity uniform programs, and provides entrance mats, restroom supplies, tile and carpet cleaning products, promotional products, first aid, safety, and fire protection products and services for more than 1,000,000 businesses throughout North America. The Complainant’s products and services are known for quality and the company has an established reputation within the industry. The Complainant’s customers include small service and manufacturing companies and major corporations that employ thousands of people. The Complainant operates in more than 400 locations in North America, including in six manufacturing plants and eight distribution centers, and has approximately 41,000 employees. The Complainant first used its CINTAS brand as early as 1973.
The Complainant owns at least a dozen valid and subsisting United States federal trademark registrations through the United States Patent and Trademark Office (“USPTO”) for the CINTAS trademark in various international classes, including, but not limited to: United States Registration No.1003590, registered on January 28, 1975; United States Registration No. 4052718, registered on November 8, 2011; United States Registration No. 4070080, registered on December 13, 2011; United States Registration No. 5124225, registered on January 17, 2017; and United States Registration No.5124226, registered on January 17, 2017. The Complainant also owns registered trademarks in numerous jurisdictions worldwide. The above trademarks will hereinafter be referred to as the “CINTAS Mark”.
The Complainant owns the domain name <cintas.com>, registered by the Complainant on August 19, 1995, and resolves to the Complainant’s official website at “www.cintas.com”.
The Disputed Domain was registered on May 2, 2018. The Disputed Domain Name resolves to “www.logoup.com”, the homepage for LogoUp.com Inc., a company that specializes in customized logo apparel and printing logo promotional products, a competitor of the Complainant.1
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the CINTAS Mark.
It is uncontroverted that the Complainant has established rights in the CINTAS Mark based on years of use as well as its registered trademarks for the CINTAS Mark in the United States and worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the CINTAS Mark.
The Disputed Domain Name <cintasshirts.com> consists of the CINTAS Mark in its entirety, followed by the dictionary term “shirts”, and followed by the generic Top-Level Domain (“gTLD”) “.com”. Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s CINTAS Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the use made of the Disputed Domain Name to resolve to another entity’s website, in this case, “www.logoup.com”, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it.
Moreover, where a domain name consists of the complainant’s trademark plus an additional term, UDRP panels have held that they cannot constitute fair use if it suggests sponsorship or endorsement by the trademark owner. See Grundfos Holding A/S v. Ahmed Alshahri, WIPO Case No. D2015-1112; Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Disputed Domain Name was registered long after the Complainant first began using the CINTAS Mark. The Panel finds it likely that the Respondent had the Complainant’s CINTAS Mark in mind when registering the Disputed Domain Name, demonstrating bad faith.
Second, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and has used the Disputed Domain Name in bad faith to target the Complainant’s CINTAS Mark and to drive Internet traffic seeking the Complainant’s products to the website to which the Disputed Domain Name resolves for commercial gain. See paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark plus the additional term “shirts” in the Disputed Domain Name, it suggests that the Complainant is the source of the website, which it is not.
Finally, the Panel finds that the act of redirecting the Disputed Domain Name to a website of a company that specializes in customized logo apparel and printing logo promotional products, which is also the Complainant’s competitor, supports a finding that the Respondent registered and is using the Disputed Domain Name in bad faith. See Roberto Federico Wille Buschmann and Industrial Esco-will, S.A. de C.V. v. STX - Dominios, STX, WIPO Case No. D2017-2581.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <cintasshirts.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: October 14, 2020
1 Specifically, the Respondent automatically redirected Internet users via a “301 redirect” from the Disputed Domain Name to “www.logup.com”. A “301 redirect” is a method whereby a domain name owner alerts web browsers and search engines that a domain has been permanently moved to a new location. In this instance, the Respondent notified web browsers and search engines that the Disputed Domain Name had moved to a new location. As a result, anyone that visited the Disputed Domain Name would be immediately and automatically diverted to “www.logoup.com”.