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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pentair, Inc. v. Frank User

Case No. DPW2016-0005

1. The Parties

The Complainant is Pentair, Inc. of Golden Valley Minnesota, United States of America, represented by Roetzel & Andress LPA, United States of America.

The Respondent is Frank User of Lagos, Ojota, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <pentair.pw> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2016, 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 October 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2016.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 12, 2016. 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

Pentair Inc., the Complainant, is a global company specialized in management of fluids and waters.

The Complainant is the owner of numerous trademarks under the sign "PENTAIR" protected throughout the world, inter alia including the US Trademark PENTAIR No. 2573714, registered on May 28, 2002, duly renewed and covering goods in class 7.

The Complainant also owns several domain names, including:

- <pentair.com>, registered on October 17, 1996; and

- <pentairwater.com>, registered on July 27, 1999.

The disputed domain name <pentair.pw> was registered on October 11, 2016 and does not resolve to any website.

5. Parties' Contentions

A. Complainant

Firstly, the Complainant contends that the disputed domain name is strictly identical to its PENTAIR trademark, since said trademark is entirely comprised in the disputed domain name. The Complainant further states that there is no significant element in the disputed domain name to distinguish it from its trademark.

Secondly, the Complainant states that the Respondent lacks any rights or legitimate interests in respect to the disputed domain name, mainly since the domain name is used by the Respondent to steal the Complainant's identity in order to scam its' customers by sending them emails from a <pentair.pw> address, to fraudulently obtain money or personal information. The Complainant argues that such use – unauthorized by the Complainant – does not constitute a bona fide commercial use of the disputed domain name in connection with a bona fide offering of goods and services.

Thirdly, the Complainant alleges that the Respondent registered the disputed domain name in order to use an email address emanating from <pentair.pw> for fraudulent messages, with an illegal purpose, which demonstrates bad faith in the registration and use of the disputed domain name. The Complainant also indicates that its PENTAIR trademark is widely known, making it unlikely that the Respondent was not aware of the Complainant's trademarks at the time of registration of the disputed domain name.

Therefore, the Complainant requests that the Panel orders the disputed domain name <pentair.pw> to be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following, namely that:

(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.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns valid PENTAIR trademarks, registered throughout the world.

These trademarks are also reflected through registration and/or use of domain names by the Complainant, such as <pentair.com> and <pentairwater.com>.

In the present case, the disputed domain name <pentair.pw> fully incorporates the Complainant's PENTAIR trademark, without any additional term to dispel the confusing similarity.

Previous UDRP panels have held that when a domain name entirely incorporates a complainant's registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy (see e.g. RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 or Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).

Finally, it is well established that the Top-Level Domain <.pw> in the present case, which corresponds to the country code TLD designating Palan, should be disregarded in asserting whether or not the disputed domain name is identical or confusingly similar to a complainant's trademark (see e.g. Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893).

In view of the above, the Panel considers that the Complainant has proved the disputed domain name is identical or at least confusingly similar to a trademark upon which the Complainant has rights.

B. Rights or Legitimate Interests

Prior UDRP panels have stated that it is sufficient for the Complainant to show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see e.g. Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).

In the present case, the Complainant has made a prima facie showing that the Respondent does not benefit from a license nor has he been granted authorization by the Complainant to use the PENTAIR trademark. Moreover, there is no business relationship between the Complainant and the Respondent and the Respondent is not commonly known under the name "pentair".

Besides, the Complainant has indicated that the Respondent uses the disputed domain name in relation with a fraudulent e-mail address, in order to contact the Complainant's actual and potential customers in search of money or personal information. The Complainant has provided as evidence a copy of an e-mail sent from an e-mail address attached to the disputed domain name, reproducing the name of one of the Complainant's legitimate employees and sent to a third party concerning banking details.

Therefore, the Panel finds that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services.

Furthermore, the Respondent has not filed a response to the Complainant's contentions to attempt to demonstrate a possible legitimate interest or right in the disputed domain name.

The Respondent has not provided evidence of the circumstances set in paragraph 4(c) of the Policy. Consequently, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to also show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.

As stated above, the disputed domain name fully incorporates the Complainant's PENTAIR trademark, trademark which was registered and used long before the creation of the disputed domain name. Furthermore, no additional element is added to this trademark in order to attempt to avoid a likelihood of confusion.

Besides, the Panel finds that the Complainant and its activities are renowned, in light of the evidence submitted by the Complainant.

All the above elements demonstrate - in the Panel's view - that the Respondent was aware of the Complainant's rights pertaining to the denomination PENTAIR at the time of registration of the disputed domain name.

Prior panels have established that the respondent's knowledge of the complainant's trademark rights at the time of registration of the disputed domain name maybe evidence of registration in bad faith (see e.g. Caixa d'Estalvis I Pensions de Barcelona v. Eric Adam, WIPO Case No. D2006-0464).

Moreover, in view of the evidence presented by the Complainant, the Panel notes that the Respondent uses the disputed domain name in order to send fraudulent e-mails to third parties, through a <pentair.pw> e-mail address, impersonating one of the Complainant's employees. The Complainant has shown that this address was used for e-mails related to banking details. This allegation was not opposed by the Respondent who did not reply to the present Complaint.

Therefore, it seems that the Respondent has intentionally attempted to deceive consumers into providing personal and financial information, believing that the latter was associated with the bona fide services offered by the Complainant (see e.g. Accor v. Shangheo Heo / Contact Privacy Inc., WIPO Case No. D2014-1471).

The use of a domain name for fraudulent purposes amounts to use in bad faith, as stated by a prior panel: "It appears that the Respondent registered the disputed domain name in order to be able to use the reply email address of "hr@desko.info". This email address was calculated to give the appearance that it belonged to the Complainant (…). The whole scheme was obviously intended to inveigle unsuspecting potential employees into purchasing a piece of third party software that was allegedly required in order for them to start work" (see Desko GmbH v. Mustafa Mashari, WIPO Case No. D2015-0817).

Finally, on a subsidiary basis, the Panel points out that although the disputed domain name does not currently resolve to any active website, passive holding does not preclude a finding of use in bad faith and can, in fact, constitute use in bad faith, as recognized by the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:

"The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent registered and to amount to the domain name being used in bad faith".

Consequently, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith.

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 <pentair.pw> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: December 23, 2016

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