WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. WhoIs Guard, Inc. / Eric Yeboah

Case No. D2018-1750

1. The Parties

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

Respondent is WhoIs Guard, Inc. of Panama, Panama / Eric Yeboah of Accra, Ghana.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2018, 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 August 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 13, 2018.

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 August 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2018.

The Center appointed David Perkins as the sole panelist in this matter on September 18, 2018. 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

4. A Complainant

4.A.1 Complainant is a publicly traded international financial services company, which provides asset servicing, fund administration, asset management, fiduciary and banking solutions for corporations, institutions, families and individuals worldwide. It was originally founded as a bank under the name ‘Northern Trust’ in 1889. It is based in Chicago, Illinois and in the U.S. has offices in 19 states and in the District of Columbia. Internationally, Complainant has a presence in more than 23 locations variously in Canada, Europe, the Middle East and the Asia-Pacific region.

4.A.2 Annexed to the Amended Complaint is a Press Release dated October 30,2014 reporting that Complainant had been named ‘Best Private Bank’ in the U.S. for the sixth consecutive year by Professional Wealth Management and The Banker magazines, both published by The Financial Times Group. As of September 30, 2014, that Release reported that Complainant had assets under custody of USD 5.9 trillion and assets under investment management of USD 923.3 billion.

Complainant’s NORTHERN TRUST and ‘anchor’ trade marks

4.A.3 The Amended Complaint states that both Complainant and its predecessor(s) have used the NORTHERN TRUST trade mark in the United States for over 125 years, since at least as early as 1889. Complainant says that it is the only owner of a U.S. federally registered trade mark that contains the term ‘Northern Trust’ for any type of product or service. Complainant owns 17 U.S. trade mark registrations that contain the words ‘Northern’ and ‘Trust’ (15 of which are incontestable registrations). Copies of certificates of registration of 16 of such registrations are annexed to the Complaint. Two of them are for NORTHERN TRUST, the earliest dating from 1975 and asserting first use in commerce since August 1889. The others are for the mark NORTHERN TRUST with various suffixes; for example, NORTHERN TRUST BANK and NORTHERN TRUST BROKERAGE.

4.A.4 Complainant says that it has numerous international registrations of the NORTHERN TRUST mark, including in Europe, some of which date from the 1970s. By way of illustration, annexed to the Amended Complaint are particulars of such registrations in China, Singapore and the European Union (European Union Trade Mark No. 003459153 registered in April 2005).

4.A.5 Also annexed to the Amended Complaint are particulars of Complainant’s U.S. trademarks for three representations of an anchor design, all in Class 36. The earliest depicts an anchor surrounded by a rondel containing the words ‘Northern Trust Principles that Endure’. That mark was registered in 1997 claiming first use in 1991. The second depicts the same anchor within a rondel but without any accompanying wording. That mark was registered in 2001 claiming first use in commerce in December 1999. The third depicts what the Complaint terms ‘an updated version’, first used in January 2016 and registered later that year in October 2016. Also annexed to the Amended Complaint are particulars of registrations for the second anchor design in China, the European Union (European Union Trade Mark No. 011592136) and Singapore and International Registration 1307576 dated March 2016 for the third updated anchor design in 12 countries.

4.A.6 As evidence of the time, effort and cost of promoting its NORTHERN TRUST brand, the Amended Complaint provides a link to commercials featuring that brand.

Complainant’s NORTHERN TRUST domain name

4.A.7 Complainant is the owner of the <northerntrust.com> domain name registered in 1996 and resolving to its website since 1999.

Evidence of use of the NORTHERN TRUST mark

4.A.8 As further evidence of use of the NORTHERN TRUST mark, annexed to the Amended Complaint is a Historical Timeline of Complainant from 1889 to 2014, which illustrates use of that mark and a print out of Google search results for ‘northern trust’.

4. B Respondent

4.B.1 In the absence of a Response, what is known of Respondent is contained in the Amended Complaint and its Annexes.

4.B.2 The disputed domain name <northtrust.org> was registered on May 6, 2018. Annexed to the Amended Complaint is a print out of the website to which that domain name resolves. That website offers online banking, money transfer, money trading, currency services and other financial services. It claims:

“Our branch network of 20 prime commercial across the Kingdom provides a full range of retail foreign exchange services.”

The website also depicts, inter alia, an anchor design for its ‘EZREMIT’ service which is described in the following terms:

“EZRemit is available online and via our branch network. Money Remit leverages the strength of Monex’s international banking relationships.”

4.B.3 The Amended Complaint reproduces the following from the website under the heading ‘Our Approach’:

“With a 129 year history of connecting people, and over 100 years of experience moving funds around the world, North Trust has become an industry leader in global banking and money transfers. As a highly respected Fortune 500 company, we possess solid financial strength and have a strong credit rating, so you can trust that your money is in good hands.

North Trust Business Solutions was formed in 1889, when NorthTrust acquired Custom House, an award winning industry leader with over 18 years of experience in international payments and currency risk management. Following the acquisition of Travelex Business Payments in 2011, the company has expanded to become one of the world’s leading banking providers of cross-border business payments.”

4.B.4 The copyright notice of the website to which the disputed domain name resolves reads:

“Copyright C 1889 North Trust Bank.”

4.B.5 Finally, the Amended Complaint points to the fact that the contact address for North Trust Bank appearing at that website is, in fact, the location of a Chase Bank in the Bronx, New York.

5. Parties’ Contentions

5.A Complainant

Identical or Confusingly Similar

5.A.1 Complainant asserts that, based on its trade mark rights in the NORTHERN TRUST mark, that mark is a well-known financial services brand in the United States and worldwide.

5.A.2 Complainant points to the fact that the disputed domain name <northtrust.org> is identical to that mark but for the suffix ‘ern’ to the NORTH constituent of NORTHERN TRUST. That slight alteration does not, Complainant says, prevent “North Trust” from providing the same or nearly the same impression as NORTHERN TRUST, nor does it ‘diminish, mitigate against, or alter the high degree of consumer recognition associated between the disputed domain name...’ and its NORTHERN TRUST mark. Consequently, Complainant says, the disputed domain name is confusingly similar to that mark. In support of that assertion, the Amended Complaint cites several decisions under the Policy where comparable slight deviations from a complainant’s trade mark have been held to be confusingly similar.

Rights or Legitimate Interests

5.A.3 First, Complainant States that it has not licensed or otherwise authorised Respondent to use its NORTHERN TRUST mark.

5.A.4 Nor to its knowledge, Complainant says, has Respondent been commonly known by the disputed domain name.

5.A.5 Respondent’s use of the disputed domain at the website to which it resolves cannot, Complainant says, on the evidence of the content of that website summarised in paragraph 4.B above, be considered to be a legitimate or fair use of that domain name. It is clear, Complainant says, from the evidence of that website that the disputed domain name is being used to obtain commercial gain by misleading consumers. That use, Complainant asserts, improperly trades on its substantial goodwill in the NORTHERN TRUST mark and is calculated to create consumer confusion by falsely suggesting that Complainant is the source, sponsor, affiliate or endorser of Respondent and/or North Trust Bank. It is, Complainant says, neither a bona fide, fair or noncommercial use of the disputed domain name.

Registered and Used in Bad Faith

5.A.6 Complainant’s case, based on the content of the website to which the disputed domain name resolves, is that there is clear evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Citing the decision in Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, Complainant says that Respondent is responsible for the content of the website to which the disputed domain name resolves.

6. Discussion and Findings

6.1 The Policy, paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:

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

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

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

6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.

6.3 The Policy, paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 In the light of Complainant’s registrations for the NORTHERN TRUST mark and long and extensive use of that mark (summarised in paragraphs 4.A.3 to 4.A.8 above), Complainant clearly has rights in that mark, which is a well known mark in the banking and financial services sectors.

6.6 The abbreviation of ‘Northern’ to ‘North’ in the disputed domain name does not, in the Panel’s opinion, avoid a finding of confusing similarity between Complainant’s NORTHERN TRUST mark and Respondent’s <northtrust.org> domain name.

6.7 Accordingly, the Amended Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. In this respect, having regard to section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel notes but does not rely upon the content of the website associated with the disputed domain name.

Rights or Legitimate Interests

6.8 On the basis of the evidence summarised in paragraphs 4.B.2 to 4.B.5 above, it is clear that the circumstances provided for in paragraph 4(c)(iii) of the Policy are not met and that Complainant’s case summarised in paragraphs 5.A.3 to 5.A.5 above is well made out. Consequently, the Amended Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith.

6.9 Similarly, on the basis of the evidence summarised in paragraphs 4.B.2 to 4.B.5 above, the circumstances provided for in paragraph 4(b)(iv) of the Policy are met and, consequently, Complainant’s case meets the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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, <northtrust.org>, be transferred to Complainant.

David Perkins
Sole Panelist
Date: September 28, 2018