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WIPO Arbitration and Mediation Center


Northern Trust Corporation v. WhoisGuard Protected / Charles Dublin

Case No. D2020-3514

1. The Parties

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

Respondent is WhoisGuard Protected / Charles Dublin, United States.

2. The Domain Name and Registrar

The disputed domain name <northerntrustfund.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 13, 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 Respondent of the Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2021.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 10, 2021. 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 international financial services company that proves asset servicing, fund administration, asset management, fiduciary and banking solutions for corporations, institutions, families and individuals worldwide. Complainant’s predecessor was originally founded as a bank in 1889 under the name “Northern Trust.” Complainant employs over 18,000 people in its network of offices. In the United States, Complainant has offices in 19 states and the District of Columbia, and internationally, Complainant has more than 23 locations in Canada, Europe, the Middle East, the United Kingdom, and the Asia-Pacific region. Complainant has received numerous awards including the Financial Times Group “Best Private Bank in the US in 2019, and Fortune Magazine’s “World’s Most Admired Companies” for 13 consecutive years.

Complainant or its predecessor(s) has used the trademark NORTHERN TRUST in the United States for over 130 years. Complainant is the only owner of a United States federally registered trademark that contains the term “Northern Trust” for any type of product or service. Complainant currently owns 16 United States trademark registrations that contain the words “Northern” and “Trust”, 13 of which are incontestable registrations. Complainant also owns numerous international registrations including in the European Union, China and the Middle East.

Complainant also owns United States trademark registration No. 2,848,340 for NORTHERN TRUST FUND PEEK THROUGH, issued in 2004 and now incontestable, and United States trademark registration No. 2,175,112 for NORTHERN FUNDS, issued in 1998 and now incontestable.

Complainant is the registrant of the domain names <northerntrust.com>, <northerntrustbank.com> and <northerntrustbank.net>. Complainant obtained the domain name <northerntrust.com> in 1996 and has operated its primary website at the domain name since at least 1999. Google searches for “northern trust” and “northern trust fund” lead to prominent listings of Complainant’s primary website and other sites that discuss Complainant and/or its services.

The disputed domain name was created on September 15, 2020. Respondent, Charles Dublin, registered the domain name under a WhoisGuard Protected privacy shield.

Respondent’s website at the disputed domain name mimics an investment banking website and solicits contact information from the public. Some pages of the website list an address in Chicago that does not appear to be the address of any building in Chicago, but is similar to an address of a building in which Complainant leases space.

The “Contact” page on the website at the disputed domain name provides a New York address that does not appear to be a real address in New York. The telephone number uses an area code located in the state of Indiana.

The website links to “sign up” and “login” pages that ask for an internet user’s name, password, email address and other personal information.

Complainant received an inquiry submitted via Complainant’s website at “www.northerntrust.com” from an individual who stated that they were approached by an individual claiming to work for Northern Trust Corporation who attempted to direct them to the website at the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical to or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interest in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in their claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant owns trademark registrations for the trademarks NORTHERN TRUST and NORTHERN TRUST FUND PEEK THROUGH, NORTHERN FUNDS and other NORTHERN TRUST or FUND-formative marks, including several registrations in the United States dating back to 1975. The disputed domain name incorporates Complainant’s NORTHERN TRUST mark in its entirety. The added word “fund” does not add any distinctive feature and is confusingly similar to Complainant’s registered marks NORTHERN FUNDS and NORTHERN TRUST FUND PEEK THROUGH.

The Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s trademark rights.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not a licensee or business associate of Complainant or any of its affiliates, and is not otherwise authorized by Complainant to use its trademarks in any manner, including in a domain name. Respondent does not appear to operate a bank or investment services company under the name “Northern Trust Fund” at any of the physical locations listed in the website at the disputed domain name. The content of the website located at the disputed domain name appears to be a fake investment banking site that advertises the same type of services as Complainant. Respondent is using Complainant’s trademark to conduct potentially illegal online scams, such as phishing and imitation schemes, by intentionally confusing and misleading the public into believing they are communicating with Complainant and providing personal information or engaging in other transactions with Complainant. The disputed domain name includes “Sign Up”” and “Login” pages that ask for an internet user’s name, email address and other personal information. There is nothing in the record to indicate that Respondent operates a legitimate business, and its collection of information via the website at the disputed domain name is likely linked to phishing attempts.

The Panel finds that Respondent is using the disputed domain name to misleadingly divert customers to Respondent’s website for the purpose of gathering personal information from consumers for Respondent’s illicit commercial gain. Such use is not a bona fide use, nor a fair or non-commercial use of the disputed domain name.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The record indicates that Complainant’s trademarks are well known and that Respondent must have been aware of Complainant’s trademarks at the time it registered the disputed domain name. The record further indicates that Respondent is using the disputed domain name to create confusion and to mislead clients and potential clients of Complainant, and the public, into falsely believing that Respondent’s website is associated with Complainant. Respondent’s website at the disputed domain name appears to be intended to be engaged in phishing or fraudulent collection of personal information from which Respondent likely obtains commercial gain. Use of a domain name to divert traffic from Complainant’s website in this manner is evidence of bad faith.

The Panel finds that the disputed domain name was registered and is being 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 <northerntrustfund.com> be transferred to the Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: March 10, 2021