WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Nukak Asanansi

Case No. D2021-2128

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Nukak Asanansi, Nigeria.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2021, 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 the Complainant on July 8, 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 July 10, 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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2021.

The Center appointed George R. F. Souter as the sole panelist in this matter on August 18, 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

The Complainant is a financial services company, which has been trading under the NORTHERN TRUST trademark since 1889. Currently it employs over 18,000 people, and has offices in 19 states in the USA, and 23 in other countries.

Details of extensive registrations of its NORTHERN TRUST trademark have been supplied to the Panel. These include US Registration No 1001355, registered on January 7, 1975, and European Union Registration No 003459153, registered on April 14, 2005.

The disputed domain name was registered on May 1, 2021, and has been used to resolve to a website mimicking an investment banking website. It is currently being used in connection with “Sign up” and “login” pages, requesting personal information, with no apparently conceivable legitimate reason.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its NORTHERN TRUST trademark, containing the trademark in its entirety, with no additions.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, so far as the Complainant is aware, the Respondent is not generally known by the disputed domain name, and that the Complainant has never granted permission to the Respondent to use its NORTHERN TRUST trademark in connection with a domain name registration, or otherwise.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith.

B. Respondent

The Respondent did not file a timely reply to the Complainant’s contentions. The Respondent did file a subsequent comment, which the Panel, in its discretion, decided to allow, but this included no justification as to rights or legitimate interests in the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(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 is being used in bad faith.

A. Identical or Confusingly Similar

The Panel recognizes the Complainant’s NORTHERN TRUST trademark to be well-known.

It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic TopLevel Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name.

Accordingly, the Panel considers the gTLD “.fund” to be irrelevant in the circumstances of the present case, and so finds.

As the disputed domain name is identical to the Complainant’s NORTHERN TRUST trademark, it is self evident that the disputed domain name is confusingly similar to the Complainant’s trademark, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Complainant has provided evidence that the disputed domain name previously resolved to a website mimicking an investment banking website and relating to the same commercial field as that of the Complainant.

The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s NORTHERN TRUST trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.

As mentioned above, the disputed domain name previously resolved to a website mimicking an investment banking website, to the possible detriment of the Complainant’s interests. In the Panel’s opinion, this is a clear example of illegitimate use of the disputed domain name, and justifies a finding of use in bad faith, and the Panel so finds.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name <northerntrust.fund> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: September 1, 2021