WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Domains By Proxy, LLC, DomainsByProxy.com / Dasun Krivokapic

Case No. D2019-0098

1. The Parties

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

The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Dasun Krivokapic of Tallinn, Estonia.

2. The Domain Name and Registrar

The disputed domain name <northerntrustco.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2019. On January 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 23, 2019.

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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2019.

The Center appointed Douglas Clark as the sole panelist in this matter on February 21, 2019. 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, founded in 1889 under the trade name “Northern Trust”, is a publicly traded international financial services company. It provides asset servicing, fund administration, asset management, fiduciary and banking solutions for corporations, institutions, families and individuals worldwide.

The Complainant has offices in 19 states in the United States. It has more than 23 locations all around the world including eight locations in Europe and others in Canada, the Middle East and in the Asia Pacific regions. The Complainant currently employs over 18,000 people worldwide.

The Complainant is the owner of various NORTHERN TRUST trademarks in numerous jurisdictions including United States trademark registration Nos. 1001355 and 5380734 registered on January 7, 1975, and January 16, 2018 respectively, and European trademark No. 003459153, registered on September 10, 2013.

The Complainant also operates the <notherntrust.com> domain name, registered in 1996.

The Respondent is an individual based in Tallinn, Estonia.

The disputed domain name was registered on April 11, 2018 and currently resolves to a page that promotes banking and financial services purportedly through a bank registered in Belize.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name <northerntrustco.com> and the trademark NORTHERN TRUST are confusingly similar. The disputed domain name contains “northerntrust” in its entirety as the distinctive part of the disputed domain name. The additional English letters “co” do not affect the similarity of the domain name to the Complainant’s registered trademark.

No rights or legitimate Interests

The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for NORTHERNTRUST. It, therefore, has no rights or legitimate interests in the disputed domain name.

Registered and used in bad faith

The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the NORTHERNTRUST trademark given its long history and worldwide reputation. The Respondent purports to provide banking services at the website under the disputed domain name and must have registered the disputed domain name to disrupt the business of the Complainant and/or to prevent the Complainant from reflecting its mark in a corresponding domain name.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed 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 the Complainant has rights;

(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 use in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <northerntrustco.com> is confusingly similar to the Complainant’s trademark.

The disputed domain name incorporates the Complainant’s NORTHERTRUST’s mark in full with the additional word “co”. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Considering the absence of a Response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <northertrustco.com> was registered in bad faith and is being used in bad faith.

The Complainant has a worldwide banking business including eight branches in Europe. The website under the disputed domain name purports to offer banking services. There can be no doubt that the Respondent knew of the Complainant before the registration of the disputed domain name.

The current website resolves to a page that claims to be Northern Trust and promotes banking and financial services. The Respondent is clearly trying to trick potential customers into believing that that it is the Complainant. The disputed domain name is clearly been used to attract, for commercial gain, Internet users to the webpage, by creating a likelihood of confusion with the Complainant’s mark of the service of the website.

The third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <northerntrustco.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: February 28, 2019