Cintas Corporation v Host Master, Transure Enterprise Ltd

WIPO Case No. D2022-1540

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Cintas Corporation v. Host Master, Transure Enterprise Ltd

Case No. D2022-1540

1. The Parties

Complainant is Cintas Corporation, United States of America (“United States”), represented by Keating

Muething & Klekamp PLL, United States.

Respondent is Host Master, Transure Enterprise Ltd, United States.

2. The Domain Name and Registrar

The disputed domain name <cintasshop.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2022. On April 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on May 2, 2022 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 May 2, 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 May 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 25, 2022.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 31, 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

Complainant Cintas Corporation (“Complainant” or “Cintas”) designs, manufactures, and implements facilities, 13 distribution centers and approximately 11,000 local delivery routes. During its fiscal year ending May 31, 2021, Complainant generated nearly USD 7.12 billion in revenue. Complainant uses its CINTAS mark on and in connection with the entirety of its offering of goods and services. As a result, the entirety of its 2021 annual revenue of nearly USD 7.12 billion is connected to use of the CINTAS mark. In 2018, Complainant was listed for the first time as a Fortune 500 company, and in 2021, it increased its ranking on this list to No. 410.
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. Complainant’s customers include a wide range of
businesses, from small service and manufacturing companies to major corporations that employ thousands
of people. Founded in 1968, Complainant developed additional products and services that complemented its
core uniform business and broadened the scope of products and services available to its customers. As of

Complainant owns several trademark registrations for the CINTAS mark (the “Mark”) in multiple jurisdictions, with sample registration details as follows:

- CINTAS, United States Reg. No. 985,550, registered on June 4, 1974;

- CINTAS, United States Reg. No. 4,070,080, registered on December 13, 2011.

Complainant has continuously used its CINTAS mark since 1973. Complainant maintains its corporate website through its domain name <cintas.com>, which Complainant registered on August 19, 1995. Complainant’s products can be purchased online from its website hosted at the domain <shop.cintas.com>, which was activated by Complainant in November 2014. Complainant also owns the domain <shopcintas.com>, which it registered on October 17, 2002, and which redirects to another of Complainant’s websites. Respondent registered the disputed domain name several decades after Complainant established trademark rights in the CINTAS mark.

The disputed domain name was registered on June 15, 2020. Currently, the disputed domain name resolves to a parked webpage hosting third party links and seems to randomly rotate to pornographic content.

5. Parties’ Contentions

A. Complainant

According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s CINTAS trademark in which Complainant has rights as demonstrated through its cited registrations. The Mark was adopted and has been continuously used since at least as early as 1973 in connection with

providing business related services. Complainant maintains its online presence through its websites hosted
at its domain names <cintas.com> and <shopcintas.com>.

Complainant argues that the disputed domain name fully incorporates the Mark. Complainant also argues that the addition of the word “shop” at the end of the Mark is clearly not sufficient to avoid a finding of confusing similarity with Complainant’s prior rights. Complainant argues that, due to the complete reproduction of Complainant’s company name and prior well-known trademarks, and similarity to

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Complainant’s own registered domain names, Internet users will obviously and wrongly think that the disputed domain name belongs to Complainant or has been registered in its name.

Complainant asserts that Respondent lacks any rights or legitimate interests in the disputed domain name. consent.

According to Complainant, Respondent does not have any trademark rights to the Mark, nor does
Respondent make any bona fide offering of services on the website to which the disputed domain name
resolves. Complainant alleges that Respondent is using the disputed domain name to divert Internet traffic
to a website that contains pay-per-click (“PPC”) or pornographic affiliate advertising links which presumably
generate affiliate revenue for Respondent when they are clicked by Internet users. Complainant also asserts
that it has not granted Respondent, by license or otherwise, permission to use the Mark in any way.

Complainant argues that Respondent both registered and is using the disputed domain name in bad faith. According to Complainant, Respondent registered and used the disputed domain name intentionally in an attempt to attract Internet users to its website for financial gain by creating a likelihood of confusion with

Complainant’s trademark. Complainant argues that Respondent intends to attract Internet users and
consumers looking for legitimate Cintas services and/or authorized partners to Respondent’s own webpage
for Respondent’s illicit commercial gain. Complainant argues that Respondent could not have been unaware
of the existence of Complainant’s famous trademarks and company name when registering the disputed
domain name. Complainant argues that the mere fact that Respondent has registered the disputed domain
name which incorporates the famous CINTAS mark is alone sufficient to give rise to an inference of bad
faith. Complainant additionally highlights that Complainant is a Fortune 500 company, and that the CINTAS
mark is used on and in connection with all of the goods and services it provides to consumers. Complainant
argues that, under similar circumstances, panels have concluded that respondents have had actual notice of
a complainant’s mark prior to registering a domain name which consists, in part, of the complainant’s mark,
thereby satisfying the bad faith registration prong of the Policy. Complainant argues that such actions clearly

show the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraphs 5(f) and 14(a) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall proceed to a decision on the basis of the complaint.

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(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 was registered and is being used in bad faith.

A respondent’s failure to rely to the complainant’s contentions does not by itself satisfy a complainant’s
burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section
4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO
Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden
remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a
preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No.
D2006-0340.

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A. Identical or Confusingly Similar

A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns multiple trademark registrations for the CINTAS

trademark as referenced above. Therefore, Complainant has established that it has rights in the Mark.

The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

Here, the disputed domain name incorporates the entirety of the Mark, adding only the word “shop” to the end, which does not prevent a finding of confusing similarity. A side-by-side comparison of the Mark and the disputed domain name reveals that the Mark is easily identifiable within the disputed domain name.

Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy
in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its

CINTAS mark.

B. Rights or Legitimate Interests

prima facie

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a showing that forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

Respondent possesses no rights or legitimate interests in the disputed domain name. See WIPO Overview
3.0, section 2.1. Once Complainant makes such a prima facie showing, the burden of production shifts to

Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business or other organization) has been commonly known by the disputed

domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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 trademark or service mark at

issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain
name. Respondent has failed to come forward with any evidence showing rights or legitimate interests.
Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that
Respondent is not an assignee or licensee of Complainant and that Respondent has no other business
relationship with Complainant. Complainant has contended that Respondent is not commonly known by the
disputed domain name and that there is no evidence that Respondent has established trademark rights in
the disputed domain name. Again, Respondent has not provided any evidence or arguments to demonstrate
that it has such rights. Complainant has put forward a prima facie case that Respondent lacks rights or

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legitimate interests in the disputed domain name, which Respondent has not rebutted.

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Bad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of

the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged

in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Here, Respondent’s actions align with 4(b)(iv) of the Policy. The disputed domain name contains the entirety of the CINTAS mark, with the addition of the word “shop” to the end. Due to the well-known nature of Complainant’s brand, evidenced by its numerous trademark registrations for CINTAS as well as global brand recognition provided by Complainant through its extensive use of the Mark and its online presence, along with the unauthorized use of the Mark in the disputed domain name, Respondent was undoubtedly aware of Complainant and the Mark when it registered the disputed domain name. Moreover, in these circumstances, it appears likely that Respondent used the Mark in the disputed domain name to take unfair advantage of the reputation and goodwill of the Mark inter alia to promote click-through revenue through the disputed domain name.

This Panel therefore finds that Respondent acted in bad faith by its registration and use of the disputed domain name, intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website with the purpose of attracting Internet users for commercial gain as per paragraph 4(b)(iv) of the Policy.

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, <cintasshop.com>, be transferred to Complainant.

/Brian J. Winterfeldt/
Brian J. Winterfeldt
Sole Panelist
Date: June 13, 2022