WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Domain Admin, Whoisprotection.cc, WhoisGuard Protected, WhoisGuard, Inc. / matteo schmid, matteo schmid, northernglobalfunds

Case No. D2021-0729

1. The Parties

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

The Respondents are Domain Admin, Whoisprotection.cc, Malaysia and WhoisGuard Protected, WhoisGuard, Inc., Panama / matteo schmid, United Kingdom and matteo schmid, northernglobalfunds, Ireland (collectively referred to as the “Respondent”¹).

2. The Domain Names and Registrars

The disputed domain name <northernglobalfunds.com> is registered with NameCheap, Inc. (the “First Registrar”). The disputed domain name <northerntrustglobalfundsplc.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Second Registrar”).

(the First Registrar and the Second Registrar together are referred to as the “Registrars” and the first and second disputed domain names are together also referred to as the “Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 10, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On March 10, 2021 and March 11, 2021, the First Registrar and the Second Registrar each transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint, respectively. The Center sent an email communication to the Complainant on March 15, 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 March 19, 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 March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021.

On April 16, 2021, noticing an administrative oversight, the Center resent by email to the Respondent the notification of Complaint and granted the Respondent a five day period to indicate whether it wishes to participate in the proceeding. The Respondent did not reply to the email.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 26, 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 following facts are undisputed.

The Complainant is a publicly traded (Nasdaq: NTRS) international financial services company providing 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 the Complainant today employs over 18,000 people in its network of offices. In the United States, the Complainant currently has offices in 18 states and the District of Columbia. In Europe, the Complainant currently has approximately seven offices.

The Complainant’s subsidiaries include, among others, an entity in Ireland named “Northern Trust Global Funds PLC” which has a registration with the Financial Conduct Authority (“FCA”).

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 owns multiple trademark registrations for NORTHERN TRUST and NORTHERN TRUST formative marks, including United States trademark registration number 1,001,355 for NORTHERN TRUST, registered on January 7, 1975, with a claim of first use in commerce on or about August 7, 1889, specifying general banking and other services in class 36; and European Union (“EU”) trademark registration number 003459153 for NORTHERN TRUST, registered on April 14, 2005, specifying various services including financial investment services in class 36, as well as the United Kingdom (“UK”) comparable right, being the registration that was spun off from the EU trademark registration as a result of the Brexit and is now registered as UK00903459153. All three of those trademark registrations will hereinafter be referred to, in singular, as the “Trademark”.

The Complainant is also the registrant of the domain name <northerntrust.com> that it uses in

connection with a website where it provides information about itself and its services.

The disputed domain name <northerntrustglobalfundsplc.com> was registered on February 5, 2021. The disputed domain name <northernglobalfunds.com> was registered on December 8, 2020. Before filing the Complaint, the Domain Names resolved to two nearly identical websites (the “Websites”) with information about securities and showing the name NORTHERN GLOBAL FUNDS and the “NT anchor logo” that is in use by the Complainant and for which the Complainant has trademark registrations in various jurisdictions worldwide including the United States and the UK.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The disputed domain name <northerntrustglobalfundsplc.com> consists of the entire Trademark, with the

addition of “globalfundsplc”. The disputed domain name <northernglobalfunds.com> consists of the dominant feature, i.e., “northern”, of the Trademark, with the addition of “globalfunds”.

The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Respondent is not and never was known by, or doing business under, the name “northern trust” or “northern” until commencing to use the Websites.

The Respondent appears to use the Domain Names to promote investment management, investment strategies, and other financial services similar to the services offered by the Complainant. The Respondent has no interest in the NORTHERN TRUST mark other than using the Domain Names and the names “Northern Trust Global Funds PLC” and “Northern Global Funds” to reap commercial gain from misleading clients and potential clients seeking the Complainant’s website and its financial and investment banking services or relying on the Complainant’s reputation and goodwill. The Respondent diverted such persons to the Websites which promoted investment management, investment strategies, and other financial services that are unrelated to and appear to be competitive with the Complainant’s services, for the purpose of phishing which is not a legitimate purpose.

The Domain Names were registered and are being used in bad faith. The Respondent deliberately used the Domain Names to create confusion and to mislead clients and potential clients of the Complainant, and the public, into falsely believing that a relationship of source, sponsorship, affiliation or endorsement exists between the Complainant and the Websites. The Respondent uses the Domain Names in a manner that is likely to capture traffic from clients or potential clients of the Complainant, and the public, looking for the Complainant’s website and to direct such customers instead to the Websites.

The Domain Names promoted financial and investment services that are competitive with the Complainant’s services and appear to engage in phishing or fraudulent collection of personal information from which the Respondent likely obtains commercial gain. This is an intentional attempt by the Respondent to use the Domain Names to attract, for commercial gain, Internet users to the Websites, by creating a likelihood of confusion with the Trademark and NT anchor logo.

The Respondent must have been aware of the Trademark when registering the Domain Names because the Domain Names (i) are highly similar to the Trademark; and (ii) hosted websites using the Complainant’s marks including its NT anchor logo in the color and presentation used by the Complainant on its website, within the content of the Websites, all without authorization from the Complainant.

Further, the Respondent’s use of the FCA Reference Number of the Complainant’s Northern Trust Global Funds PLC subsidiary as the Respondent’s own FCA reference number on the websites at the Domain Names also indicates the Respondent’s likely awareness of the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Names are 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 Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Names must be shown to be identical or confusingly similar to that mark.

It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in NORTHERN TRUST for the purposes of the Policy.

As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Names and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Names are confusingly similar to the Trademark.

The Domain Name <northerntrustglobalfundsplc.com> consists of the entire Trademark, with the addition of “globalfundsplc”. The Domain Name <northernglobalfunds.com> consists of the element “northern” of the Trademark, with the addition of “globalfunds”. Moreover, the Domain Names have been used to point to a page containing the Complainant’s NT anchor logo. This shows that the Respondent targeted the Trademark and affirms the confusing similarity (see section 1.15 of the WIPO Overview 3.0).

In addition, with regard to the gTLD “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Names are confusingly similar to the Trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as:

(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Names.

To the contrary, in the view of the Panel the Respondent clearly tries to impersonate the Complainant, which in particular follows from the use the Respondent makes of the Complainant’s NT anchor logo on the Websites and the use of the FCA reference number of the Complainant’s subsidiary. It is inconceivable that this use can be regarded as bona fide use.

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Names were registered and are being used in bad faith.

The Panel refers to its considerations under section 6.B above and adds the following.

In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known. In addition, in light of the Respondent’s use of the Complainant’s NT anchor logo on the Websites and the use of the FCA reference number of the Complainant’s subsidiary, the Panel is convinced that the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Names.

The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Websites or other online location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Websites or location or of a product or service on the Websites or location. This is a circumstance of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met.

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 Domain Names <northernglobalfunds.com> and <northerntrustglobalfundsplc.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: April 30, 2021

¹ The Panel notes that the Registrar-confirmed email addresses for matteo schmid and matteo schmid, northernglobalfunds are identical.