WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Northern Trust

Case No. D2019-2221

1. The Parties

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

The Respondent is Northern Trust, United Kingdom.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2019. On September 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 September 16, 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 September 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 September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Center received two requests for an extension from an email address associated with the disputed domain name on September 23, 2019. Pursuant to paragraph 5(b) of the Rules, the due date for Response was extended to October 12, 2019. The Respondent did not file a substantive Response and the Center notified the Parties that it would proceed with Panel appointment on October 14, 2019.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 16, 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 is a financial services company. It has an Irish subsidiary named “Northern Trust Global Funds Plc”. It had a British subsidiary named “Northern Trust Global Services Plc” until October 8, 2018, when that subsidiary changed its name.

The Complainant owns multiple trademark registrations, 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 trademark registration number 003459153 for NORTHERN TRUST, registered on April 14, 2005, specifying various services including financial investment services in class 36. Both those trademark registrations remain current. 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 Respondent is named in the Registrar’s WhoIs database as “Northern Trust”.

The disputed domain name was registered on May 30, 2019. It resolves to a website allegedly for a company named “Northern Trust Global Services Plc” offering investment management and other financial services in “London” and “Ireland”. The website claims that the company is authorized by the United Kingdom Financial Conduct Authority (“FCA”) and the Prudential Regulation Authority with Financial Services Register number 572850 but that is, in fact, the reference number of the Complainant’s Irish subsidiary. The website also displays two addresses, one of which is the actual address of the Complainant’s Irish subsidiary.

On July 3, 2019, the FCA issued a warning that “Northern Trust Global Services Plc” is a clone of the Complainant’s Irish subsidiary. A clone firm is a scam tactic used by fraudsters. The clone firm is not authorised or registered by the FCA but targets people in the United Kingdom, claiming to be an authorised firm.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s NORTHERN TRUST trademark. The added words “global plc” are merely descriptive.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not, and never was, a licensee or business associate of the Complainant or any of its affiliates, nor otherwise authorized by the Complainant to use its NORTHERN TRUST trademark in any manner. The Respondent is not, and never was, known by, or doing business under the name NORTHERN TRUST until commencing to offer, or allowing a third party to offer, the website at the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent is deliberately using or allowing use of the disputed domain name 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 website at the disputed domain name.

B. Respondent

Two informal email communications were received by the Center from the Respondent’s contact email address. The first stated that the sender wanted to contest this matter. The second alleged that the sender was doing nothing wrong. No formal Response was filed.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

the respondent has no rights or legitimate interests in respect of the disputed domain name; and

the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the NORTHERN TRUST trademark.

The disputed domain name incorporates the NORTHERN TRUST trademark as its initial element, with the exception of the space between the words, which cannot form part of a domain name for technical reasons. The disputed domain name also includes the elements “global”, which is a dictionary word, and “Plc”, which is an abbreviation of the dictionary words “public limited company”. As a mere dictionary word and abbreviation, these elements do not dispel the confusing similarity between the disputed domain name and the trademark. The NORTHERN TRUST trademark remains clearly recognizable within the disputed domain name.

The disputed domain name also includes the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix need only be considered for the purposes of the first element of the Policy where it has some impact beyond its technical purpose, which is not the case here.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, the disputed domain name resolves to a website that falsely claims to be the official website of an affiliate of the Complainant. It displays the FCA reference number and address of the Complainant’s Irish subsidiary, together with the very similar former name of the Complainant’s British subsidiary. The disputed domain name is confusingly similar to the Complainant’s NORTHERN TRUST trademark but the Complainant submits that the Respondent is not, and never was, a licensee or business associate of the Complainant or any of its affiliates, nor otherwise authorized by the Complainant to use its NORTHERN TRUST trademark in any manner. This shows that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of services within the terms of paragraph 4(c)(i) of the Policy.

As regards the second circumstance, the Registrar’s WhoIs database indicates that the Respondent’s name is “Northern Trust”. However, there is no other evidence that this is indeed the Respondent’s name, and no evidence indicating that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website offering investment management and other financial services. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

As regards registration, the disputed domain name was registered decades after the Complainant’s trademark registrations. The disputed domain name resolves to a website that offers services identical to those of the Complainant and that displays the actual FCA reference number and address of the Complainant’s Irish subsidiary and the very similar former name of the Complainant’s British subsidiary. This all gives the Panel reason to find that the Respondent was aware of the Complainant and its mark at the time of registration of the disputed domain name and that it registered the disputed domain name in bad faith.

As regards use, the disputed domain name resolves to a website that gives the false impression that it is affiliated with the Complainant. The website claims to be that of a firm that has been declared a clone of the Complainant’s Irish subsidiary. The evidence on record includes instances of actual confusion where third parties have received emails sent from the disputed domain name, claiming to be an affiliate of the Complainant. Therefore, the Panel finds that the Respondent uses the disputed domain name for phishing activities and to intentionally attract Internet users to its site by creating a likelihood of confusion with the Complainant’s NORTHERN TRUST mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site. This use is intentional and for the commercial benefit of the Respondent. The Panel finds that the disputed domain name is being used in bad faith within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <northerntrustglobalplc.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 25, 2019