WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Marc Bessan, Micro Pay Regie

Case No. D2019-1778

1. The Parties

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

The Respondent is Marc Bessan, Micro Pay Regie, France.

2. The Domain Name and Registrar

The disputed domain name <northerntrustglobalinvest.com> is registered with OVH sas (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2019, 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. On August 5, 2019, the Center sent an email communication to the Parties, in English and in French, indicating the language of the registration agreement is French, and inviting the Parties to submit their preference as to the language of the proceeding. The Complainant submitted its preference that English be the language of the proceeding on August 7, 2019. The Respondent did not submit any comments. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 7, 2019.

The Center verified that the Complaint together with the amendment to 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 in both English and French, and the proceedings commenced on August 20, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2019.

The Center appointed Assen Alexiev, David Perkins, and Benjamin Fontaine as panelists in this matter on October 18, 2019. The Panel finds that it was properly constituted. Each member of 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 publicly traded international financial services company providing asset servicing, fund administration, asset management, fiduciary and banking solutions for corporations, institutions, families and individuals. The Complainant’s predecessor was established in 1889 as a bank under the name “Northern Trust”. Today, the Complainant employs over 18,000 people in the United States, Canada, Europe, the Middle East and the Asia-Pacific region.

The Complainant is the owner of the following trademark registration for NORTHERN TRUST (the “NORTHERN TRUST trademark”):

- the trademark NORTHERN TRUST with registration No. 1,001,355, registered in the United States on January 7, 1975 for services in International Class 36; and

- the European Union trademark NORTHERN TRUST with registration No. 003459153, registered on April 14, 2005 for services in International Class 36.

The Complainant is also the owner of the trademark NORTHERN TRUST GLOBAL INVESTMENTS with registration No. 2,450,535, registered in the United States on May 15, 2001 for services in International Class 36 (the “NORTHERN TRUST GLOBAL INVESTMENTS trademark”).

The Complainant acquired the domain name <northerntrust.com> in 1996 and uses it for its official website.

The disputed domain name was registered on April 5, 2019. It resolves to a website that offers investment, banking, and asset management services and financial advice.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s NORTHERN TRUST trademark. The disputed domain name reproduces the entire trademark with the addition of “globalinvest”. The addition of the words “global” and “invest” enhances the likelihood of confusion because the Complainant operates a subsidiary in Europe by the name of “Northern Trust Global Investments Limited”, and because the Complainant owns a United States trademark registration for the trademark NORTHERN TRUST GLOBAL INVESTMENTS. The Complainant adds that the words “global” and “invest” are descriptive of the services offered by the Complainant and do not differentiate the disputed domain name from the Complainant’s NORTHERN TRUST trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent has never been associated to the Complainant or authorized by the Complainant to use the NORTHERN TRUST trademark, and the Respondent is not known by the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for commercial gain to mislead clients and potential clients seeking the Complainant’s investment banking services and divert them to the website at the disputed domain name which promotes services that are competitive with the Complainant’s services. The Complainant points out that the website at the disputed domain name advertises the services provided by an entity named “Northern Trust Global Invest”. The “About Us” section of the website states that “Northern Trust Global Invest offers its clients a unique experience based on an innovative tool, multilingual teams and a network of outstanding banking and financial correspondents”. The French version of the website at the disputed domain name displays the address of one of the Complainant’s office locations and the address of the Complainant’s subsidiary Northern Trust Global Investments Limited in London.

The Complainant states that on May 17, 2019 and on June 18, 2019, it sent cease and desist letters to the Respondent, but received no response.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue - Language of the proceedings

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is French. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant points out that the disputed domain name consists of four English words and that the website at the disputed domain name has an English version and specifies a contact address in London. The Center has sent all its messages to the Respondent in both English and French, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded to this invitation and has thus not objected to the Complainant’s request that the proceedings be held in English.

Taking the above into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

6.2. Substantive Matters

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent has however not submitted a Response and has not made any comments on the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the NORTHERN TRUST trademark and in the NORTHERN TRUST GLOBAL INVESTMENTS trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the element “northerntrustglobalinvest”. It consists of the English words “northern”, “trust”, “global” and “invest”. The combination and sequence of these words reproduce the words that form the NORTHERN TRUST GLOBAL INVESTMENTS trademark with the only difference between them (apart from the omission of spaces, which for technical reasons cannot form part of domain names) being that the word “investments” in the trademark is contracted to “invest” in the disputed domain name. The Panel does not regard this difference as changing the overall appearance of the disputed domain name in a material way or as limiting the confusing similarity with the NORTHERN TRUST GLOBAL INVESTMENTS trademark.

Similarly, the combination of the words “northern” and “trust” in the disputed domain name reproduces the NORTHERN TRUST trademark. The addition of the descriptive words “global” and “invest” in the disputed domain name refers to the services offered by the Complainant and does not change its overall appearance in which the Complainant’s NORTHERN TRUST trademark is easily recognized and dominates.

In view of the above, it appears likely that Internet users may be confused that the disputed domain name is associated to the Complainant. Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the NORTHERN TRUST trademark and to the NORTHERN TRUST GLOBAL INVESTMENTS trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has never been associated to the Complainant or authorized by the Complainant to use the NORTHERN TRUST trademark and is not known by the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for commercial gain to mislead Internet users and divert them to the Respondent’s website which promotes services that are competitive with the Complainant’s services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it.

The disputed domain name is confusingly similar to the Complainant’s NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENTS trademarks, and the evidence in the case file confirms the Complainant’s allegation that the Respondent’s website offers financial and other services similar to those offered by the Complainant and provides as contact address the address of the Complainant’s affiliate in London. This combination of circumstances may mislead visitors of the Respondent’s website at the disputed domain name that it is affiliated to or endorsed by the Complainant. The Respondent has not provided any explanation for its choice and use of the disputed domain name. In view of it being a specific combination of four words, it appears to the Panel that its registration by the Respondent was not a coincidence, but was made in view of the Complainant and its NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENT trademarks, which the Complainant has used for many years prior to the registration of the disputed domain name.

In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENT trademarks, has registered the disputed domain name in an attempt to attract Internet visitors to its website by misleading them that it is affiliated to the Complainant and then offer them for financial gain services that compete with the services provided by the Complainant. The Panel does not regard such conduct as giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is confusingly similar to the NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENTS trademarks, and the evidence shows that it resolves to an active website that offers services that compete with the services offered by the Complainant. The Respondent does not dispute the statements of the Complainant and the evidence in the case file.

Taking the above into account, the Panel accepts as more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENTS trademarks, without having any authorization to do so by the Complainant. It is likely that by creating a likelihood of confusion with the Complainant’s NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENT trademarks, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location affiliated to the Complainant and then offer them services that compete with the Complainant’s services for commercial gain.

Therefore, the Panel finds that the disputed domain name has been registered and used 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 <northerntrustglobalinvest.com> be transferred to the Complainant.

Assen Alexiev
Presiding Panelist

David Perkins
Panelist

Benjamin Fontaine
Panelist
Date: November 1, 2019