Complainant is Cintas Corporation, United States of America (“United States”), represented by Keating Muething & Klekamp PLL, United States.
Respondent is Speks Admin, Speks, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2020. On August 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2020. Respondent sent an informal email on September 19, 2020, to the Center offering to transfer ownership of the disputed domain name. After an exchange of correspondence regarding Respondent’s message, Complainant asked the Center to proceed with a decision. Respondent did not submit a formal response. The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 8, 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. 4. Factual Background Complainant is a publicly-traded, Fortune 500 company, based in the United States. Complainant offers various products and services via its over 400 locations in North America, including design and manufacture of corporate identity uniforms. Complainant has been operating since 1968, and owns numerous trademark registrations for the mark CINTAS, in standard character and stylized wording, both internationally and in the United States. These include United States Registration Nos. 1003590 (registered January 28, 1975) and 4052718 (registered November 8, 2011). Complainant owns various domain names that incorporate its CINTAS mark, including The disputed domain name Complainant contends that (i) the disputed domain name 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 CINTAS mark, which has generated USD 65 billion in revenue for the year ended May 31, 2018. Complainant further contends that Respondent has incorporated the CINTAS mark into the disputed domain name, and merely added the descriptive terms “promo” and “shop”, which would be understood by consumers as referring to promotional products, such as those which Complainant offers to its numerous customers. 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 to profit from the good will of Complainant’s mark for Respondent’s own commercial gain. B. Respondent Respondent replied to Complainant’s contentions with an informal email on September 19, 2020, stating, “I will not renew this domain and will transfer ownership to the appropriate party”. Respondent sent another message to the Center on September 22 with a similar statement. After an exchange of correspondence regarding Respondent’s message, Complainant asked the Center to proceed with a decision. Respondent did not submit a formal response. 6. Discussion and Findings A. Preliminary Statement The Panel notes that Respondent has expressed a desire to settle this proceeding. Complainant has indicated, however, that it wishes to obtain a decision from the Panel. Under these circumstances, the Panel finds it appropriate to discuss and render a full decision. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10. B. Identical or Confusingly Similar The Panel must first determine whether the disputed domain name 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 CINTAS mark, and merely adds the dictionary terms “promo” and “shop,” which are likely to be understood by consumers as a place where they could find promotional goods offered by or involving Complainant and its CINTAS mark. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web,WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0620; General Electric Company v. Recruiters,WIPO Case No. D2007-0584. 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. B. Rights or Legitimate Interests The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” 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. Therefore, the Panel finds that Complainant has made a prima facie case providing sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted, and rather has expressed an intention to transfer ownership of the disputed domain name. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has linked the URL associated with the disputed domain name to a website that redirects to a website that appears to be controlled by Respondent, and which offers for sale promotional items, some of which are similar to, and compete with, promotional items offered by Complainant. Respondent is using the disputed domain name without consent of Complainant, presumably for Respondent’s own commercial gain. Considering the renown of Complainant’s CINTAS mark, and the nature of the use of the disputed domain name, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name in bad faith. Therefore, Complainant has satisfied the third element of the UDRP, with regard to paragraph (4)(a)(iii) 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 Lorelei Ritchie
Sole Panelist
Date: October 20, 2020
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