WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Whois Agent, Whois Privacy Protection Service Inc. / Darrell Kurk

Case No. D2020-0774

1. The Parties

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

The Respondent is Whois Agent, Whois Privacy Protection Service Inc., Canada / Darrell Kurk, United States.

2. The Domain Name and Registrar

The disputed domain name <ntrustinvestmentsonline.com> (“Disputed Domain Name”) is registered with Register.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 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 the Complainant on April 6, 2020 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 April 10, 2020.

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 April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on May 18, 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 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, United States. It has offices in 19 states of the United States and in the District of Columbia. Internationally, the Complainant has a presence in more than 23 locations variously in Canada, Europe, the Middle East, and the Asia-Pacific region. The Complainant has rights in the NT (and design) trademark, Reg. No. 5067361, registered on October 25, 2016; United States Reg. No. 1001355 for NORTHERN TRUST, registered on January 7, 1975; Unites States. Reg. No. 5380734 for NORTHRN TRUST, registered January 16, 2018; and, European Union Trademark Reg. No. 3459153 for NORTHERN TRUST, registered April 14, 2005.

The Respondent registered the Disputed Domain Name on July 26, 2019. The Disputed Domain Name was purportedly used to promote a financial services entity under the name “NTRUST Investments Online” and “NTrust Private Investment Bank”. The website displayed an NT and anchor logo (similar to which the Complainant uses), and reproduced a quote from the CEO of the Complainant. The Respondent purportedly sent emails to individuals as part of a phishing scheme.

5. Parties’ Contentions

A. Complainant

The Complainant asserts it is a well-respected and publicly traded international financial services company that is a leading provider of asset servicing, fund administration, asset management, fiduciary and banking solutions for corporations, institutions, families and individuals worldwide. The Complainant’s predecessor was originally founded as a bank under the name “Northern Trust” in 1889, and today employs over 18,000 people in its network of offices. In the United States, the Complainant has offices in 19 states and the District of Columbia, and internationally, the Complainant has more than 23 locations in Canada, Europe, the Middle East, and the Asia-Pacific region, including a London office in the United Kingdom.

The Complainant or its predecessor(s) has used the trademark NORTHERN TRUST in the United States for over 125 years, since at least as early as 1889. The Complainant currently owns 17 United States trademark registrations that contain the words “Northern” and “Trust” (15 of which are incontestable registrations), along with numerous international registrations including in the European Union and United Kingdom.

Registrations include United States Reg. No. 1001355 for NORTHERN TRUST, registered on January 7, 1975; Unites States. Reg. No. 5380734 for NORTHRN TRUST, registered January 16, 2018; and European Union Trademark Reg. No. 3459153 for NORTHERN TRUST, registered April 14, 2005.

The Complainant also owns United States Reg. No. 5067631 for NT (and Design), registered October 25, 2016.

The Complainant or its predecessor(s) also has used an anchor design trademark incorporating a stylized version of the initials NT since at least as early as 1991. The Complainant owns three United States trademark registrations that contain include or embody an anchor design (two of which are incontestable registrations). An updated version of the anchor design mark with the initials NT was introduced by the Complainant in 2016. The Complainant owns United States Reg. no. 5067631 for the updated NT and anchor design, registered October 25, 2016.

The Complainant is the registrant of the domain name <northerntrust.com>. The Complainant obtained the domain name in 1996 and has operated a website at its domain name since at least 1999.

The Disputed Domain Name was created on July 26, 2019. The Respondent is unknown to the Complainant and has no relationship with the Complainant or its business or trademarks.

The Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services, and does not operate legitimate banking services as NTrust Investments Online or NTrust Private Investment Bank.

The Disputed Domain Name is being used in a phishing scheme. The home page of the website at the Disputed Domain Name purports to offer professional investment services under the names “NTrust A Private Investment Bank” and “NTrust Private Investment Bank.” The website at the Disputed Domain Name purports to offer investing, trust and estate, banking, wealth planning, and other services.

The website displays an anchor design which encompasses the initials “NT.”

The website at the Disputed Domain Name purportedly quotes the “President and Chief Executive Officer”, purportedly describing NTrust’s performance. The person quoted is the Chairman, President and Chief Executive Officer of the Complainant, and has no relationship with the Respondent.

The “Join Us” section of the website at the Disputed Domain Name requests that Internet users enter personally identifiable information, including name, address, email, phone number, and date of birth.

The Respondent sent at least one phishing email using the Disputed Domain Name in the email address. The phishing email asked an individual to pay EUR 1,000 to unlock an account.

The Disputed Domain Name consists of the registered mark NORTHERN TRUST owned by the Complainant, with omission of the letters “orthern” in the word “NORTHERN”. The Disputed Domain also copies the Complainant’s registered mark NORTHERN TRUST GLOBAL INVESTMENTS, with omission of the letters “orthern” and changing the phrase GLOBAL INVESTMENTS to “Investments Online”. These slight alterations do not prevent “NTrust” from providing the same or nearly the same impression as NORTHERN TRUST, or “NTrustInvestmentsOnline” from providing the same or nearly the same impression as NORTHERN TRUST GLOBAL INVESTMENTS. The form of the Disputed Domain Name does not diminish, mitigate against, or alter the high degree of consumer recognition associated between the Disputed Domain Name and the Complainant, nor differentiate the Disputed Domain Name from the Complainant’s NORTHERN TRUST and NORTHERN TRUST GLOBAL INVESTMENTS marks, especially when the Disputed Domain Named in tandem with the names “NTrust A Private Investment Bank” and “NTrust Private Investment Bank” and an “NT” anchor-like design mark similar to the Anchor Marks.

The Respondent is not, and never was, a licensee or business associate of the Complainant or any of its affiliates, nor is the Respondent otherwise authorized by the Complainant to use its NORTHERN TRUST mark or Anchor Marks in any manner, including as a domain name or for a website offering banking services. On information and belief, the Respondent is not and never was known by, or doing business under the name “Northern Trust”, “NTrust”, “NTrust Private Investment Bank”, or “NTrust Investments Online”.

The Respondent appears to use the Disputed Domain Name to carry out an email phishing scheme. However, the phishing email directed the consumer to an exact subdomain, <ntrustinvestmentsonline.com/Members>. When navigating to the exact subdomain indicated in the phishing email, a full website is viewable. The phishing email caused actual confusion with the Complainant’s marks, causing the consumer to believe that “Account Manager Mr [ ] Sullivan” was an employee of the Complainant, and that this representative of the Complainant was asking the consumer to pay a EUR 1,000 fee to “unlock the account.”

The website at the Disputed Domain Name is directly involved in phishing activities, from which the Respondent likely obtains commercial gain. This is an intentional attempt by the Respondent to use or allow use of the Disputed Domain Name to attract, for commercial gain, Internet users to the website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s NORTHERN TRUST and anchor marks.

The Respondent likely is aware of the Complainant’s NORTHERN TRUST mark and anchor marks and rights because the website at the Disputed Domain Name is purporting to offer many of the same services that the Complainant offers, while including an abbreviation of the Complainant’s widely used NORTHERN TRUST mark and an infringing copy of the Complainant’s anchor marks, and a purported quotation from the Chairman, President and Chief Executive Officer of the Complainant. The Respondent also would have become aware of the NORTHERN TRUST marks based on a simple Internet search using the words “northern trust” or “ntrustinvestments.”

The Respondent uses the Disputed Domain Name for email phishing fraud for commercial gain. Phishing is clear evidence of bad faith. See Kimley-Horn and Associates, Inc. v. Abrahim Hashim, WIPO Case No. DCO2019-0017; BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364 (“[T]he use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.”); see also National Westminster Bank plc v. Sites / Michael Vetter, WIPO Case No. D2013-0870 (phishing constitutes bad faith use); Virgin Enterprises Limited v. Remi Ibrahim, WIPO Case No. D2018-2131.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated its ownership of the NORTHERN TRUST and NT and anchor logo marks. It has provided certificates of registrations for both marks. Furthermore, the Complainant’s website at <northerntrust.com> demonstrates use of both marks.

The Complainant asserts that the Disputed Domain Name contains its registered mark NORTHERN TRUST, but for the letters “orthern.” However, this is not a typical typo-squatting case, in the sense that it is improbable that a user might accidently type in “ntrust” instead of “northerntrust.”

Rather, this dispute provides an instance where, in determining confusing similarity for standing purposes, the Panel considers the context in which certain users may encounter the Disputed Domain Name. See WIPO Overview 3.0, Section 1.15 (panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name).

Here, the Complainant has provided evidence that the Disputed Domain Name has been used to send emails pertaining to wealth management. If the recipient clicks on a link, they could encounter the Respondent’s website that prominently displays the NTRUST trademark, as well as a NT and anchor logo trademark. In this sense, the “ntrust” string is confusingly similar to the NORTHERN TRUST and NT trademarks. The addition of the terms “investments online” affirm the confusion, as these are terms descriptive of the Complainant’s trademarks. See, Facebook, Inc. v. Otumba David, WIPO Case No. DCO2018-0002 (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademarks FB and FACEBOOK. Although <f-bk.co> is not identical to Complainant’s registered marks, “[i]n some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.”) See, also, Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (<bmdecoder.com> and <bmwdecoder.com>, transferred; <bmdecoder.com> held confusingly similar to BMW).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant needs to at least put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not given the Respondent permission to use the Complainant’s trademarks in any manner, the Respondent is not commonly known by the Disputed Domain Name, and the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name.

The Disputed Domain Name is presently being used for a parking page. However, the Complainant provided evidence that the Disputed Domain Name was used to host a website reproducing the Complainant’s trademarks, and purporting to provide wealth management services similar to those of the Complainant. Furthermore, the Respondent allegedly transmitted emails purporting to come from the Complainant, which emails solicited funds and financial information. Such use provides evidence of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. See Regeneron Pharmaceuticals, Inc. v. Nikki Dockum, Tred, WIPO Case No. D2018-0155 (“In this case, the principal indicator of the lack of rights or legitimate interests comes from the alleged fraudulent nature of the Respondent’s use of the disputed domain name to generate spear phishing email. […] Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.”).

The Panel finds that, in the absence of a response from the Respondent, the Complainant is deemed to have satisfied the burden of proof on this element (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

The Complainant has established that it is, in part, a wealth management business. Therefore, the Respondent’s addition of the words “investments online” to the Complainant’s well-known trademark, reinforces confusion by suggesting that the Disputed Domain Name is related to the Complainant and/or the Complainant’s company or affiliate member firms. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004.

Further, there are unrebutted assertions and evidence that the Respondent used the Disputed Domain Name to maintain a website promoting wealth management services and reproducing the Complainant’s trademarks, including its anchor design logo, and to send deceptive emails purporting to come from the Complainant. It is therefore inconceivable that the Respondent was not aware of the Complainant’s rights in its trademark, and thus, acted in bad faith. See Minerva S.A. v. Whoisguard Prote, Whoisguard, Inc. / Greyhat Services, WIPO Case No. D2016-0385 (finding that the disputed domain name was registered and used in bad faith by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant).

Furthermore, the Panel may also make negative inferences arising from the Respondent’s failure to respond. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.

The Panel finds that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith, as outlined in 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 <ntrustinvestmentsonline.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: June 8, 2020