WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Jacob Princewill

Case No. D2020-2589

1. The Parties

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

The Respondent is Jacob Princewill, Nigeria.

2. The Domain Names and Registrar

The disputed domain names <northerntownbank.com> and <northerntownbank.net> are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2020, 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. According to information the Center received from the Registrar, the language of the Registration Agreement for the disputed domain names is Russian.

On October 15, 2020, the Center sent an email communication to the Parties, in English and Russian, regarding the language of the proceeding. The Complainant requested English to be the language of the proceeding on October 15, 2020. The Respondent did not comment on the language of the proceeding.

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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.

The Center appointed Taras Kyslyy as the sole panelist in this matter on November 24, 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

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 various trademark registrations for NORTHERN TRUST, including the United States registration No. 1,001,355, registered on January 7, 1975.

The Complainant is the owner of trademark registration for NORTHERN TRUST BANK, namely the United States registration No. 1,626,282, registered on December 4, 1990.

The Complainant is the owner of various trademark registrations for its NT anchor logo design including the United States registration No. 5,067,631, registered on October 25, 2016.

The Complainant acquired the domain names <northerntrust.com>, <northerntrustbank.com>, and <northerntrustbank.net> and uses it for its official website for decades.

The disputed domain name <northerntownbank.com> was registered on October 21, 2018. It resolved to a website that mocks design of the website previously used by the Complainant, features the Complainant’s NT anchor logo, and offers investment, banking, and asset management services and financial advice. Currently it resolves to inactive website.

The disputed domain name <northerntownbank.net> was registered on January 3, 2019. It resolves to a website that features the Complainant's NT anchor logo, and offers investment, banking, and asset management services and financial advice.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names consist of the phrase “Northern Town Bank” which is calculated to be confused with the Complainant’s trademarks NORTHERN TRUST and NORTHERN TRUST BANK in online searches and through typo-squatting. This imitation of the Complainant’s trademarks in the disputed domain names provides the same impression as the Complainant’s trademarks, and does not diminish, mitigate against, or alter the high degree of consumer recognition associated between the disputed domain names and the Complainant, nor differentiate the disputed domain names from the Complainant’s trademarks. Content of the websites associated with the disputed domain names adds to the confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not, and never was, a licensee or business associate of the Complainant or any of its affiliates, nor is the Respondent otherwise authorized by the Complainant to use its trademarks in any manner, including as a domain name or for a website offering banking services. The Respondent appears to use the disputed domain names intentionally to confuse and mislead the public into believing they are communicating with the Complainant, and into mistakenly providing personal information or engaging in other transactions with the Respondent. The Respondent does not appear to operate banks under the name “Northern Town Bank” or at the physical location provided at the address in the disputed domain name <northerntownbank.net>. The Respondent’s use of the disputed domain names improperly trades on the Complainant’s substantial goodwill in its trademarks and creates a likelihood of confusion among the public by falsely suggesting that the Complainant is the source, sponsor, affiliate or endorser of the Respondent and/or the websites at the disputed domain names and/or the services promoted at or from the websites at the disputed domain names.

The disputed domain names were registered and are being used in bad faith. The Respondent is deliberately using the disputed domain names to create confusion and to mislead clients and potential clients of the Complainant, and the public, into falsely believing that a relationship of source, sponsorship, affiliation or endorsement exists between the Complainant and the websites located at the disputed domain names. The disputed domain names appear to engage in phishing or fraudulent collection of personal information from which the Respondent likely obtains commercial gain. The Respondent must have been aware of the Complainant’s trademarks when registering the disputed domain names. The Respondent’s only purpose for and use of the disputed domain names is to misdirect consumers who are looking for the Complainant’s website or services to the websites at the Disputed Domain Names to conduct phishing and other transactions for the Respondent’s improper benefit, by creating a likelihood of confusion with the Complainant’s marks as to the affiliation or endorsement of those websites.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademarks.

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLDs “.com” and “.net” for the purposes of the confusing similarity test.

The Panel notes that the disputed domain names differ from the Complainant’s trademark NORTHERN TRUST BANK by using word “town” instead of the word “trust”. The first element functions primarily as a standing requirement and is considered a low threshold test. The Panel finds that the trademark is recognizable within the disputed domain names for the purposes of the analysis under the first element. The Panel further notes that according to section 1.15 of the WIPO Overview 3.0 the content of the website associated with the domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element. In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. In the present case, the Panel finds that the content of the websites associated with the disputed domain names supports a finding in favor of the confusing similarity of the disputed domain names and the Complainant’s trademark.

Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.

The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The disputed domain names redirect/redirected Internet users to a websites with a logo similar to the Complainant’s. One of the respective websites was also designed similarly to previous version of the Complainant’s website to make the Internet users believe that they actually access the Complainant’s website or website under the Complainant’s control. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr.a/k/a Dan Marino v. Edgar Carrillo / Greg Rice, Video Images Productions, WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).

Although the disputed domain name <northerntownbank.com> currently resolves to inactive website, it does preclude to find lack of any rights or legitimate interests of the Respondent in the disputed domain name (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

The Respondent’s use of the confusingly similar disputed domain names on a website offering overlapping services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy (see, e.g., Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to section 3.2.2 of the WIPO Overview 3. 0 noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen Top-Level Domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. The Panel finds that use of the disputed domain names to suggest services overlapping with the Complainant’s and under the Complainant’s logo, and also using design of the Complainant’s website confirm the Respondent knew and targeted the Complainant and its trademarks when registering the disputed domain names, which is bad faith.

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, 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, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

In this regard, the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith.

Although at the time of this decision the disputed domain name <northerntownbank.com> resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).

Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under 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 names, <northerntownbank.com> and <northerntownbank.net>, be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: November 25, 2020