Northern Trust Corporation v Christy Jimah

WIPO Case No. D2023-0951

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Northern Trust Corporation v. Christy Jimah

Case No. D2023-0951

1. The Parties

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

Dentons US LLP, United States.

Respondent is Christy Jimah, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <northerntrustfinance.com> (the “Domain Name”) is registered with

OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2023. On March 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 3, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (WhoisSecure) and contact information in the Complaint. The Center sent an email communication to Complainant on March 7, 2023, 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 March 10, 2023.

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 March 14, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2023. Respondent sent two emails to the Center on March 14, 2023, and on April 19, 2023, but did not submit any formal response. On April 5, 2023, the Center notified Respondent’s default.

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The Center appointed Marina Perraki as the sole panelist in this matter on April 24, 2023. 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

Complainant is a publicly traded financial services company providing asset servicing, fund administration,
asset management, fiduciary and banking solutions. Complainant’s predecessor was originally founded as a
bank under the name “Northern Trust” in 1889, and today employs over 22,000 people. In the United States
Complainant has offices in 19 states and the District of Columbia, while internationally Complainant has
more than 22 locations in Canada, Europe, the Middle East and the Asia-Pacific region. In 2022, the
Financial Times Group named Complainant “Best Private Bank in the U.S.” Complainant has received
numerous other awards and accolades, including being identified as one of the “World’s Most Admired
Companies” by Fortune Magazine for 17 consecutive years.

Complainant owns trademark registrations for NORTHERN TRUST including, the United States trademark registration No. 1001355 NORTHERN TRUST (word), filed on July 13, 1973, and registered on January 7, 1975, for services in international class 36.

Complainant also owns domain name registrations for NORTHERN TRUST including <northerntrust.com> registered in 1996 under which Complainant operates its primary website since at least 1999.

The Domain Name was registered on January 7, 2023, and leads to an active website that purports to be the website of a “finance house” offering services including loans, savings, insurance, and tax payment (the “Website”). The header and footer on the Website use the words “Northern Trust Finance”, describing it as a “World Leading Finance House”. Most of the links (including “About Us”, “Events”, “Your Payments”, Facebook and Twitter buttons, etc.) do not link to other pages and merely take the user back to the top of the main page. The Website provides a non-functional email address and a physical address. The Website includes a form for personal and business enrollment for a variety of purported accounts including “Northern Trust Finance Personal Account Package” and “Northern Trust Finance Non-Resident Account Package”. It also includes a login page where users can submit an account number and a password. Per Complaint, this could be used to solicit bank account information from users.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions. On March 14 and April 19, 2023, Respondent sent emails to the Center indicating possible settlement that eventually failed.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s NORTHERN TRUST trademark in its entirety. This is sufficient to establish confusing similarity.

The addition of the word “finance” in the Domain Name, does not avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The Panel also notes the content of the Website, which reproduces Complainant’s trademark and logos.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.
Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii)      Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. Nor is there any indication on the record that Respondent has been commonly known by the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name was used to host the Website to impersonate Complainant and attempt to mislead consumers into thinking that the services purportedly offered on the Website originate from Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name (Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502).

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The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i)        circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because Complainant’s mark had been used and registered by Complainant before the Domain Name
registration, and noting the content of the Website, it is clear that Respondent had Complainant’s mark in
mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No.
09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case
No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No.
D2000-0226).

Furthermore, the content of the Website gives the impression that it originates from Complainant, displaying Complainant’s trademark, thereby giving the false impression that the Website emanates from Complainant. This further supports registration in bad faith reinforcing the likelihood of confusion, as Internet users are

likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO
Overview 3.0, section 3.1.4).

The above further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc, WIPO Case No. D2015-0403).

As regards bad faith use, Complainant demonstrated that the Domain Name is employed to host a Website which appears falsely to be that of Complainant. The Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business. This supports the finding of bad faith use (Arkema France v. Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; and WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

Under these circumstances and on this record, the Panel finds that Respondent registered and used the
Domain Name in bad faith.

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Complainant has established Policy, paragraph 4(a)(iii)

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 Name <northerntrustfinance.com> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: May 8, 2023