Northern Trust Corporation v Domain Admin
WIPO Case No. D2025-0468
•20-03-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Northern Trust Corporation v. Domain Admin
Case No. D2025-0468
1. The Parties
Complainant is Northern Trust Corporation, United States of America (“United States”), represented by
Dentons US LLP, United States.
Respondent is Domain Admin, United States.
2. The Domain Name and Registrar
The Disputed Domain Name <northentrust.com> is registered with NameSnapper LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2025.
On February 6, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On February 6, 2025, 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 (Perfect Privacy, LLC) and contact information in the Complaint.
The Center sent an email communication to Complainant on February 7, 2025, 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 February 7, 2025.
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 February 13, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2025. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on March 6, 2025.
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The Center appointed Richard W. Page as the sole panelist in this matter on March 11, 2025. 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
| fund administration, asset management, fiduciary and banking solutions for corporations, institutions, | Complainant is a publicly traded internation financial services company that is a provider of asset services, consistent performers in the 11 years of the award, and Complainant has received numerous other awards and accolades, including being identified as one of the “World’s Most Admired Corporations” by Fortune Magazine for 17 consecutive years. |
| Complainant or its predecessor(s) has used the NORTHERN TRUST Mark in the United States for over 130 years, since at least as early as 1889. Complainant is the owner of a United States federally registered trademark that contains the term “Northern Trust” for many types of product or services. Complainant’s trademark registrations cover general banking and online banking services, among other things. Complainant currently owns numerous United States trademark registrations that contain the words “Northern” and “Trust” (most of which are incontestable registrations), along with international registrations including in the European Union, China, and the Middle East. | |
| Complainant’s registrations of the NORTHERN TRUST Mark include, without limitation, the following: | |
| - United States Registration No. 1001355 registered January 7, 1975 for NORTHERN TRUST in International Class 36; | |
| - United States Registration No. 5380734 registered January 16, 2018 for NORTHERN TRUST in International Class 36; and | |
| - United States Registration No. 1626282 registered December 4, 1990 for NORTHERN TRUST BANK in International Class 36. | |
| Complainant expends significant time, effort, and money promoting and marketing its NOTHERN TRUST brand in connection with financial services. For example, Complainant participates in finance-related conferences around the world and produces brochures, and television and digital advertisements. | |
| Complainant is the registrant of the domain names <northerntrust.com>, <northerntrustbank.com>, and <northerntrustbank.net>. Complainant obtained the domain name <northerntrust.com> in1996 and has operated its primary website at the domain name since at least 1999. Complainant obtained the domain name <northerntrustbank.com> in 1997 and has used the domain name to resolve to it primary site since at | |
| least 1999. Complainant obtained the domain name <northerntrustbank.net> in 2005. | |
| The Disputed Domain Name was registered on September 27, 2017, and resolves to a website which redirects users to numerous pay-per-click links offering similar services to Complainant. |
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5. Parties’ Contentions
A. Complainant
Complainant contends that the Disputed Domain Name uses the entirety of the NORTHERN TRUST Mark with the only exception of deletion of the letter “r” which creates an identical impression and is typosquatting.
Complainant submits that it has no relationship with Respondent and has never licensed or otherwise authorized Respondent to use the NORTHERN TRUST Mark for registration of the Disputed Domain Name or in any other way.
Complainant further submits that Respondent used the Disputed Domain Name to redirect users to multiple websites, including a website that contains a set of pay-per-click hyperlinks. Some of the links are related to the very categories of services that Complainant offers and promotes, including wealth management, wealth planning, financial advice, and asset management.
Complainant further submits that Respondent also uses the Disputed Domain Name to redirect users to a website that purports to be an antivirus website, offering antivirus software and “warning” users that their computers may be infected with “viruses and other malicious applications.” The site them attempts to download a trojan virus, a type of malware designed to invade a computer disguised as a real operational program.
Complainant further submits that, given the ever-changing destinations of the Disputed Domain Name, the poor quality of the resulting websites, and the many misleading warning messages at the resulting websites, there can be no legitimate business interest for the Disputed Domain Name. Rather, Respondent is clearly attempting to capitalize on the close similarity between the Disputed Domain Name and the NORTHERN TRUST Mark and Complainant’s legitimate domain names, presumably to gain revenue from each Internet user that clicks on one of the links on the website to which the Disputed Domain Name resolves, or to lure users into downloading malware. Respondent’s use of the Disputed Domain Name to gain revenue via pay- per-click links or to intentionally mislead the public is neither a bona fide offering of goods or services, nor a legitimate noncommercial fair use.
Complainant further submits that Respondent is not commonly known by the Disputed Domain Name.
Complainant alleges that Respondent is trying to use the Disputed Domain Name to post the content clients and potential clients are seeking from Complainant’s own website for banking and finance services. Complainant further alleges that Respondent is diverting Complainant’s customers to the site of the Disputed Domain Name which seeks to collect personal and financial information or engage in transactions taking advantage of the consumer’s false belief that he/she is dealing with Complainant. Complainant further alleges that such activity constitutes phishing and impersonation.
Complainant further alleges that, given Complainant’s widespread use and registration of the NORTHERN actual knowledge of Complainant’s ownership of the NORTHERN TRUST Mark.
TRUST Mark, and Respondent’s explicit use of Complainant’s NORTHERN TRUST Mark in the Disputed
Complainant contends that it has satisfied each of the three essential elements required under the Policy for a transfer of the Disputed Domain Name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
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6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the
dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will
review the evidence proffered by Complainant to verify that the three essential elements of the claims are
met. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.3.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three essential elements:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the
NORTHERN TRUST Mark in which Complainant has rights; and,
| ii) | that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, |
| iii) | that the Disputed Domain Name has been registered and is being used in bad faith. |
A. Identical or Confusingly Similar
WIPO Overview 3.0, section 1.2.1 states that registration is prima facie evidence of Complainant having enforceable rights in a trademark.
Complainant has shown rights in respect of the NORTHERN TRUST Mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the NORTHERN TRUST Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.
The NORTHERN TRUST Mark is recognizable within the Disputed Domain Name. Accordingly, the
Disputed Domain Name is confusingly similar to the NORTHERN TRUST Mark for the purposes of the
Policy. WIPO Overview 3.0, section 1.7.
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered
by panels to be confusingly similar to the relevant mark for purposes of the first element.
WIPO Overview 3.0, section 1.9. Here, the Disputed Domain Name consists of Complainant’s NORTHERN
TRUST Mark except for only one missing “r” between “e” and “n”. Therefore, the Panel finds that the
Disputed Domain Name is confusingly similar to the Complainant’s NORTHERN TRUST Mark.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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
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(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the
Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 [NORTHERN TRUST]
Mark.
Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving Respondent lacks rights or legitimate interests in the Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.
Panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. Here, the
Disputed domain name was resolved to a website that redirects users to some pay-per-click links offering similar services to Complainant, which does not confer bona fide use. Moreover, the composition of the disputed domain name, comprising a typographical variation of the NORTHERN TRUST Mark (which variation does not correspond to a dictionary term), suggests an intent to take advantage of the NORTHERN TRUST Mark.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed the Disputed Domain Name; or
Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain
Name registration to Complainant who is the owner of the [NORTHERN TRUST] Mark or to a competitor of
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the
[NORTHERN TRUST] Mark from reflecting the mark in a corresponding domain name, provided that you
have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for
commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion
with the [NORTHERN TRUST] Mark as to the source, sponsorship, affiliation, or endorsement of your
website or location or of a product on your website or location.
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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that the
Disputed Domain Name was registered and used in bad faith, but other circumstances may be relevant in
assessing whether Respondent’s registration and use of the Disputed Domain Name is in bad faith.
WIPO Overview 3.0, section 3.2.1.
Noting Complainant’s activities and reputation, the Panel finds that Respondent knew or should have known
of Complainant’s rights in the NORTHERN TRUST Mark at the time Respondent registered the Disputed
Domain Name. WIPO Overview 3.0, section 3.2.2. Moreover, the apparent typosquatting in the Disputed
Domain Name is indicative of bad faith in these circumstances.
As regards use, the Disputed Domain Name resolves to a website that redirects users to some pay-per-click links offering similar services to Complainant, which shows Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s NORTHERN TRUST Mark. The Panel notes that Complainant has shown the necessary elements of paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has established the third 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 Name <northentrust.com> be transferred to Complainant.
/Richard W. Page/
Richard W. Page
Sole Panelist
Date: March 20, 2025
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