WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Privacy Service Provided by Withheld for Privacy ehf / Stan Beef, Web Design Agency

Case No. D2021-3860

1. The Parties

The Complainant is Northern Trust Corporation, United States of America (“United States”), represented by Dentons US, United States.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Stan Beef, Web Design Agency, Turkey.

2. The Domain Names and Registrar

The disputed domain names <northerntrustb.com>, <northerntrustsbank.com>, <northerntrustunion.com>, <ntbtrustunion.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 2021, the Registrar transmitted by email to the Center its verification response:

(a) confirming the disputed domain names are registered with it;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that English is the language of the registration agreements.

The Center sent an email communication to the Complainant on November 22, 2021 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 November 23, 2021.

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 December 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 1, 2022. 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

The Complainant is a financial services company publicly listed on the NASDAQ exchange in the United States with operations around the world.

According to the Complaint, the Complainant’s predecessor was originally founded in 1889 under the name “Northern Trust”. Today, the Complainant employs over 18,000 people with offices in 19 states of the United States and 23 other locations across Canada, the European Union, the Middle East, and the Asia-Pacific region. It provides asset servicing, funds administration, asset management, fiduciary and banking solutions for corporations, institutions, families and individuals worldwide.

Wall Street Journal market data indicates the Complainant has annual sales or revenues of USD 6.32 billion.

Amongst other things, the Complainant holds the domain names <northerntrust.com>, <northerntrustbank.com> and <northerntrustbank.net>. According to the Complaint, the Complainant has been using the domain name <northerntrust.com> as its primary website to promote and provide its services since 1999. The domain name <northerntrustbank.com> has redirected to that website since 1999. The domain name <northerntrustbank.net> has also redirected to the primary website since 2005.

In 2019, the Financial Times named the Complainant the “Best Private Bank in the U.S.” and described the Complainant as one of the most consistent performers in the 11 years the award has been made. The Complainant has also been named by Forbes Magazine as one of the “World’s Most Admired Companies” for 13 consecutive years.

The Complainant owns a number of registered trademark including:

(a) United States Registered Trademark No. 1,001,355, NORTHERN TRUST, which has been registered since January 7, 1975 in respect of banking trust and bond services in International Class 36;

(b) United States Registered Trademark No. 1,626,282, NORTHERN TRUST BANK, which has been registered since December 4, 1990 in respect of banking and trust services in International Class 36 and which the Complainant claims to have been using since 1982;

(c) European Union Registered Trademark No. 003459153, NORTHERN TRUST, which has been registered since April 14, 2005 in respect of a wide range of banking, financial, insurance and real estate services in International Class 36;

(d) China Registered Trademark No. 4448682, NORTHERN TRUST, which has been registered since August 21, 2008 in respect of a range of banking and financial services in International Class 36.

The Complaint includes evidence of a number of other registrations but it is not necessary to record them for present purposes.

According to the Registrar, the Respondent registered the disputed domain names on various dates between September 10 and November 4, 2021.

Shortly before the Complaint was filed, each of the disputed domain names resolved to a website. The websites were essentially the same, the main difference noticeable between them being the URL.

Each of the websites bears the prominent logo “N Northern Trust Bank” in the header and appears to offer a range of banking and financial services.

Each of the websites states the same two addresses for, respectively, the Corporate Address and the Administrative Address under the name Northern Trust Union. These addresses are in the United States. These addresses are not addresses of the Complainant. Nor are the telephone numbers listed on the websites telephone numbers connected to the Complainant.

According to the Complainant, there is no bank registered in the United States under the name “Northern Trust Union”.

Each of the websites also includes an alphanumeric code, NMLS# 410428.

According to the Complaint, the United States has a registration system for banks and mortgage providers, the Nationwide Mortgage Licensing System and Registry. The registration number NMLS# 410428 under that system is the registration number of a bank in the United States, the Sturdy Savings Bank, which has been in operation since 1922.

The layout format and much of the content of the websites is identical to the layout, format and content of the website of the Sturdy Savings Bank to which the domain name <sturdyonline.com> resolves. One obvious difference is that the Sturdy Savings Bank site features the name Sturdy Savings Bank, not Northern Trust Union. Another is that the Sturdy Savings Bank uses a maroon colour for its logo and highlights where the websites to which the disputed domain names resolve uses a green colour. The green colour is a similar shade to that used in places on the Complainant’s website.

The Corporate and Administrative Addresses on the Respondent’s websites are the Corporate and Administrative Addresses of the Sturdy Savings Bank set out on the website to which the domain name <sturdyonline.com> resolves.

According to the Complaint, many of the links on the website are not functional.

So far as searches of Google and Apple Maps disclose, there is no town or city named Kiev in Turkey. Kiev Turkey is, however, a gourmet meal or dish.

5. Discussion and Findings

No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his/her or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(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 has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of registered trademarks for both NORTHERN TRUST and NORTHERN TRUST BANK.

The second stage of this inquiry simply requires a visual and aural comparison of each disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) , section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, each of the disputed domain names <northerntrustb.com>, <northerntrustsbank.com> and <northerntrustunion.com> contains the entirety of the Complainant’s NORTHERN TRUST trademark with an additional non-distinctive element: “b”, “sbank” or “union”. These additions do not avoid a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain names.

In addition, the disputed domain name <northerntrustsbank.com> is identical to the Complainant’s registered trademark NORTHERN TRUST BANK apart from the interposition of the letter “s” between “trust” and “bank”. This can be seen as a fairly common mis-typing. It can also be seen as the kind of pluralisation which could result from an imperfect recollection of the Complainant’s name. These types of differences may be the kind of mis-typing which panels have frequently found to be “typosquatting”. See e.g. WIPO Overview 3.0, section 1.9.

The fourth disputed domain name, <ntbtrustunion.com>, can be seen as an initialism of the Complainant’s trademark NORTHERN TRUST BANK plus the words “trust” and “union”. A three letter acronym, or initialism, could of course reference many different people and things. However, the fourth disputed domain name is not just an initialism. In addition, it is permissible to take into account the content of the website to which this disputed domain name resolves.

As noted in WIPO Overview 3.0, section 1.15, the content of a website is usually disregarded when considering whether a domain name is confusingly similar to a complainant’s trademark. However, panels have recognised that it is permissible to reference the content of a website in cases of doubt to confirm whether it appears prima facie that the Respondent has been targeting the Complainant’s trademark.

In the present case, there can be no doubt that is the case as the website to which the disputed domain name resolves purports to be a banking website provided by an apparently non-existent bank operating under the name “Northern Trust Union”, a name which so closely resembles and could be readily mistaken for the Complainant’s name.

Accordingly, the Panel finds that the Complainant has established that each of the disputed domain names is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent may have rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The Respondent registered the disputed domain names long after the Complainant had registered its trademarks and also even longer after the Complainant began using its trademarks.

The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it.

The disputed domain names are not derived from the Respondent’s name.

To the extent that the disputed domain names might be argued to be derived from the name “Northern Trust Union”, first, the evidence advanced by the Complainant indicates that there is no such banking or financial institution registered in the United States under that name and, further, the banking institution which does operate from the addresses stated on the websites is in fact known as Sturdy Savings Bank.

Secondly, the basis on which any such institution adopted independently of the Complainant and could use a name which so closely resembles the Complainant’s name and registered trademarks would require convincing explanation and justification. This is because the adoption of a corporate name and domain names derived from it which so closely resemble the Complainant’s trademark and use of them in connection with the services covered by the Complainant’s trademark would appear inconsistent with the rights flowing from that trademark. Thus, what appears to be an infringement of the Complainant’ trademark would not ordinarily qualify as an offering of goods and services in good faith for the purposes of the Policy.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain names. As there has been no attempt to rebut that prima facie case or advance any claimed entitlement, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

In the present case, the Complainant and its predecessor have been using the trademarks for a very long time. As its revenue figures reported in by the Wall Street Journal indicate, the Complainant has been doing so on a very substantial scale and it has been accorded significant prominence in recent years in important financial and business awards. Furthermore, the Respondent is plainly familiar with the banking industry, particularly in the United States. In these circumstances, the Panel readily infers that the Respondent well knew of the Complainant and its trademarks when the Respondent registered the disputed domain names in late 2021.

In circumstances where the disputed domain names are confusingly similar to the Complainant’s trademarks, therefore, the registration of each of the disputed domain names apparently to offer banking and financial services in competition with the Complainant constitutes registration in bad faith under the Policy.

The use of each of the disputed domain names purportedly to offer banking and financial services in competition with the Complainant inconsistently with the Complainant’s trademark rights is also use in bad faith under the Policy.

The findings of bad faith are further reinforced by the use of apparently false address information. In addition, the Complainant’s investigations indicate that many of the links on the websites to which the disputed domain names resolve do not function leading the Complainant to suspect that the websites may be vehicles for harvesting consumers’ private information.

In circumstances where the Respondent has not sought to claim, let alone establish, that he/she or it has rights or legitimate interests in the disputed domain names, therefore, the Panel finds the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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 names, <northerntrustb.com>, <northerntrustsbank.com>, <northerntrustunion.com> and <ntbtrustunion.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: February 16, 2022