The Complainant is Wintrust Financial Corporation, United States of America, represented by Vedder Price P.C., United States of America (“United States”).
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States/ Name Redacted1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2020. On March 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 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 March 24, 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 March 27, 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 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. A third party email communication (“Third Party Communication”) was received on April 22, 2020, regarding the identity of the Respondent and appearing to indicate identity theft. On May 11, 2020, the Center acknowledged receipt of the communication and informed the Parties of receipt of a Third Party Communication. On the same day, May 11, 2020, the Center transmitted an email to the Respondent, copied to the Complainant noting that due to an administrative oversight, that the Center’s Notification email was not copied to a potential Respondent email address on the day of Notification of the Complaint. In light of this fact, the Center granted the Respondent a ten (10) day period, through May 21, 2020, in which to indicate whether it wished to participate in this proceeding. No response was filed by the Respondent. The Center proceeded to panel appointment. The Center appointed Ellen B Shankman as the sole panelist in this matter on June 4, 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 date of the Domain Name registration was October 31, 2019. The trademark WINTRUST serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide for a wide variety of financial and banking services. The Complainant provided evidence of multiple trademark registrations for the mark WINTRUST FINANCIAL CORPORATION and the mark WINTRUST including, inter alia, United States Registration No. 2,165,693 (registered on June 16, 1998) and International Registration No. 011910387 (registered on March 14, 2014) both for word marks/ logos, that predate the date of the Domain Name registrations for a variety including but not limited to various banking and investment services. The Complainant also provided evidence of the Respondent’s active website under the Domain Name that imitates the Complainant’s website and offers a financial trading platform under the name “Wintrust Expert Options”. The Panel also conducted an independent search to determine that the Domain Name resolves to an active webpage that promotes investment services and which invites the user to provide personal information under the name “Wintrust Expert Options”. 5. Parties’ Contentions A. Complainant The Complainant is a well-known financial services provider. The Complainant was established in 1991. Since at least September of 1996, the Complainant has been known by the name WINTRUST FINANCIAL CORPORATION, and since at least June 16, 1998, the Complainant has registered and continuously used the trademark WINTRUST FINANCIAL CORPORATION to identify itself and its goods and services in the United States. Since at least November 30, 1999, the Complainant has registered and continuously used a variety of trademarks including the wording “wintrust,” including, since March 22, 2011, the trademark for WINTRUST. The Complainant offers a variety of goods and services under its WINTRUST marks, including but not limited to various banking and investment services. The Complaint contends that the Domain Name fully incorporates Complainant’s mark WINTRUST and contains the additional wording “expertoptions”. This additional wording is wholly descriptive of the Complainant’s product and, therefore increases confusion. Specifically, an “option” is a financial instrument offered by Complainant. The term “expert” is descriptive of the financial services offered by Complainant. Additionally, the Complainant claims that it has received messages from members of the public expressing confusion as to whether the Respondent is affiliated with the Complainant as Respondent is “using [the Complainant’s] name for investments”. The Complainant offers a variety of goods and services under its WINTRUST marks, including but not limited to various banking and investment services and the Respondent offers investment services through the Domain Name, which is confusingly similar to the Complainant’s trademarks. The Respondent has no rights or legitimate interests in respect of the Domain Name by virtue of the fact that the Respondent’s use of the WINTRUST trademarks is unauthorized and the Respondent’s use of the Domain Name is intended for commercial gain apart from any reasonable fair use. The Complainant did not grant any right for the Respondent to use the WINTRUST trademarks or any variation thereof. The Respondent adopted this name and domain name solely to trade off the Complainant’s goodwill in its trademarks. The Complainant claims that circumstances indicate that the Domain Name was registered in order to intentionally attempt to attract, for commercial gain, Internet users to the Domain Name by creating a likelihood of confusion with the Complainant’s WINTRUST trademarks or to prevent Complainant, owner of the WINTRUST trademarks, from reflecting the mark in a corresponding domain name. Further, at least some individuals associated with the Respondent have falsely stated to members of the public that the Respondent is associated with the Complainant. Specifically, the Complainant has been notified by members of the public who received calls and/or social media messages from individuals identifying themselves as employees of the Respondent who claimed that the Respondent was affiliated with the Complainant. One such individual (the “Respondent Agent”) stated that Respondent was part of Wintrust Financial Corporation (i.e., Complainant). The Respondent Agent contacted members of the public at least as early as November 2019. The Respondent Agent has a Linkedln page that identifies it as being an employee of the Respondent. That LinkedIn page falsely asserts that the Respondent Agent is a “trader” at “WinTrust” (i.e., the Complainant). Upon information and belief, the Respondent Agent does not currently work, and has not previously worked, for the Complainant. In addition, the Respondent Agent has posted on Linkedln in an effort to promote the Respondent’s website using a photograph of the Complainant’s bank branch in Milwaukee. On November 21, 2019, the Complainant sent via email and postal mail a cease and desist letter to the Respondent at the email address and United Kingdom address listed on the “contact” webpage available at the Domain Name. On December 13, 2019, the Complainant sent via email and postal mail a letter following-up with regard to the November letter. The Respondent failed to respond to the either communication. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark WINTRUST and family of marks containing WINTRUST in respect of a broad range of financial banking goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive words “expert” and “options” to the term “wintrust” does not prevent a finding of confusing similarity, and if anything enhances the confusion because these are services provided by the Complainant. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not file a formal response. No response, formal or informal, was filed by any of the numerous emails found in the record. However, the Panel notes the Third Party Communication was received on April 22, 2020, regarding the identity of the Respondent and appearing to indicate identity theft, but otherwise not substantively responding to the Complaint. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for WINTRUST. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the descriptive terms “options” and “expert” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and if anything. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The use of the Domain Name to falsely suggest affiliation or endorsement by the Complainant, or an entity related with the Complainant, for competing services, phishing, or other similar reasons does not constitute a fair noncommercial use, nor a bona fide offering of goods or services in the circumstances of this case. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark WINTRUST and uses it for the purpose of misleading and diverting Internet traffic. The unopposed allegation of potential phishing, and the evidence submitted in support of such phishing as well as the likelihood of confusion caused by imitating the Complainant’s official website and posting a photo of the Complainant’s actual bank on an associated LinkedIn page, is in view of the Panel sufficient evidence of the Respondent’s bad faith. Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. Further, when there is evidence of actual confusion, it certainly meets the standards of “likelihood of confusion”. The Panel is persuaded that the Respondent deliberately registered the Domain Name, which is identical to Complainant’s trademark together with terms that identify services provided by the Complainant to create a misleading and fraudulent impression of association and confusion with the Complainant. The content of the website clearly shows that the Respondent was well aware of the Complainant’s activities and trademarks and intended opportunistically to benefit on the goodwill of the Complainant’s trademarks and to profit from consumer confusion, and to obtain sensitive and valuable data in bad faith. As a note, even if the email submitted by the Respondent would serve in any way as response, the Panel finds that the Domain Name was registered in bad faith for the purpose of misleading and diverting Internet traffic and for opportunistic fraudulent behaviour. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the use of the photo of the Complainant’s bank and the fraudulent imitative website and the evidence of the verbal attempts to create actual confusion, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name Ellen B Shankman 1 Respondent appears to have used the name and contact details of a third party when registering the Domain Name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
Sole Panelist
Date: June 15, 2020
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