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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. WhoisGuard Protected, Whois Guard, Inc. / ERIC YEBOAH

Case No. D2019-2963

1. The Parties

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

The Respondent is WhoisGuard Protected, Whois Guard, Inc., Panama / ERIC YEBOAH, Ghana.

2. The Domain Names and Registrar

The disputed domain names <northtrustees.com> and <northtrustsbank.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2019 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 December 17, 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on January 16, 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 listed international financial services company and bank that operates in 19 States in the United States and in more than 23 locations in Canada, Europe, the Middle East and, the Asia Pacific region, and employs more than 18,000 people. The Complainant, or its predecessor, have traded under the NORTHERN TRUST name or mark since 1889. It owns numerous trade mark registrations that incorporate the NORTHERN TRUST mark both in the United States and elsewhere, including United States trade mark registration no. 1001355 registered on January 7, 1975. The Complainant registered the domain name <northerntrust.com> in 1996 and has operated a website at this domain name since 1999.

The Respondent registered the disputed domain names <northtrustsbank.com> on March 27, 2019 and <northtrustees.com> on April 28, 2019. Those websites represent that they are websites for a “North Trust Bank” purportedly in New York, and Texas.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it owns trade mark registrations for NORTHERN TRUST as noted above. It submits that the disputed domain names are identical or confusingly similar to its trade marks in that a slight alteration in the spelling of its trade marks in the disputed domain names does not change their overall impression. It says that the disputed domain names consist of the registered mark NORTHERN TRUST owned by the Complainant, with the exception of the letters “ern” in the word “northern” and the addition of the letter “s” and the descriptive term “bank” to form one of the disputed domain names (<northtrustsbank.com>) and adding “ees” to “trust” to form the other disputed domain name (<northtrustees.com>). It notes that past panels have found that slight spelling variations do not prevent trade marks from being considered as confusingly similar.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names. It says that the Respondent is neither a licensee, nor is it authorised to use the NORTHERN TRUST name or mark. It notes that the parties do not carry out any business together and it submits that the Respondent is not and never was known by or doing business under the name “Northern Trust”, or “North Trust”.

The Complainant asserts that the Respondent is using the disputed domain names to divert its clients, or potential clients, to its own websites on which it appears to promote banking, money transfer, and various other financial services. The Complainant says that the Respondent is trading on the Complainant’s name and goodwill and is creating a likelihood of confusion and association among the public in relation to its brand.

As far as bad faith is concerned, the Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith. It says that the Respondent is diverting traffic to the websites at the disputed domain names from which it purports to offer financial services that are in competition with the Complainant’s services and this is an intentional attempt by the Respondent to use the disputed domain names to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trade mark.

The Complainant says that the Respondent should have been aware of its well reputed brand at the time of registration of the disputed domain names based upon the degree of renown attaching to the Complainant’s marks and the fact that the Respondent is promoting directly competing services. In addition, the Complainant notes that the Respondent would have become aware of its marks had it carried out a simple Internet search, quite apart from checking the trade mark registrations.

As a result, the Complainant says the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it owns United States trade mark registration number 1001355 registered on January 7, 1975 for its NORTHERN TRUST mark.

Visually, there are only minor differences in spelling between the Complainant’s trade marks and the disputed domain names. Both the disputed domain names include and commence with the word “north” but do not include “ern”. They also both wholly contain the word “trust” although respectively add endings to this word, namely “ees” on the one hand and “s” followed by the word “bank”, on the other. There is a particular conceptual similarity between each of the disputed domain names and the Complainant’s mark and the fact that each of them appears to be derived from the Complainant’s mark affirms the confusing similarity. Overall, the impression that the disputed domain names have some association or connection with the NORTHERN TRUST mark is not altered by these differences. As a result, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s NORTHERN TRUST mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not licensed or authorised by the Respondent to use its trade marks and that the Respondent is not a business associate of the Complainant. Moreover, the Complainant says that there is no evidence that the Respondent is commonly known by the disputed domain names or is using the websites to which the disputed domain names resolve for a legitimate noncommercial or fair use purpose.

It appears that the disputed domain names are being used without permission to divert traffic to the websites for commercial gain as further described below; this is not a legitimate or bona fide conduct and for these reasons the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. As this case has not been rebutted by the Respondent and for the reasons set out below, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant has traded under its NORTHERN TRUST name and mark since the late nineteenth century and has owned registered trade mark rights for its mark since 1975. It operates a banking and financial services of business of considerable size under the NORTHERN TRUST name and mark both within the United States and elsewhere. The disputed domain names were only registered on March 27, 2019 and on April 28, 2019 respectively, more than 40 years after the Complainant first registered NORTHERN TRUST in the United States and long after it commenced its business there. Considering the degree of acquired distinctiveness of the Complainant’s mark and the degree of renown that appears to attach to it internationally as a result of longstanding use and considering that the Respondent also purports to operate in the banking and financial services market, it seems to the Panel more likely than not that the Respondent was well aware of the Complainant’s NORTHERN TRUST mark when it registered the disputed domain names.

This appears to the Panel to be a classic case of an intentional attempt by the Respondent to use the disputed domain names to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trade mark in terms of paragraph 4(b)(iv) of the Policy. The Respondent represents, at each of the websites to which the disputed domain names diverts, that it offers banking and financial services that appear to compete with the services offered by the Complainant and it is apparent from those websites that the Respondent’s motive is for commercial gain.

The Panel’s assessment in this regard is only reinforced by the fact that the Respondent has previously been involved in UDRP proceedings with the Complainant in Northern Trust Corporation v. Whols Guard, Inc. I Eric Yeboah, WIPO Case No. D2018-1750 in which case the Respondent had registered the domain name <northtrust.org> and the Complainant submitted evidence of a historical printout listing Eric Yeboah as the owner of <northtrustsbank.com>. On this basis it appears to the Panel that the Respondent has demonstrated a pattern of conduct of registering domain names derived from the Complainant’s NORTHERN TRUST mark and that in these circumstances there is at least a reasonable inference that it has done so either in order to prevent the Complainant from reflecting its mark in a corresponding domain name in terms of paragraph 4(b)(ii) of the Policy.

In actual fact and based upon the evidence submitted by the Complainant, it would appear that the business addresses in New York and in Texas listed on the websites to which the disputed domain names resolve are false and that no business named “North Trust Bank” is registered in either of the states of New York or Texas. There is as a result a very strong inference that the Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services and this only serves to further reinforce the Panel’s view of the Respondent’s registration and use of the disputed domain name in bad faith.

Accordingly, the Panel finds that the disputed domain names were both registered and used in bad faith and the Complaint also succeeds under this element 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, <northtrustees.com> and <northtrustsbank.com>, be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: January 22, 2020

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