Complainant is Wintrust Financial Corporation, United States of America (“United States”), represented by Vedder Price P.C., United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Henry Jones d/b/a Wintrust Realty LLC, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2021, 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 Complainant on February 22, 2021, 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 22, 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. On February 23, 2021, an informal email communication was received from Respondent, however, Respondent did not submit any formal response. Accordingly, the Center informed the Parties on March 25, 2021, that it was proceeding to panel appointment. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 31, 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 Complainant, Wintrust Financial Corporation, is a financial services provider. Complainant has since the mid-1990s offered a variety financial, investment, real estate sales, and mortgage lending related services under a family of WINTRUST formative marks such as, but not limited to, WINTRUST, WINTRUST FINANCIAL CORPORATION, WINTRUST BANK, WINTRUST MORTGAGE, WINTRUST WEALTH MANAGEMENT and WINTRUST INVESTMENTS. Complainant owns a number of trademark registrations for its WINTRUST marks in relation to its services in the United States, including by way of example the following: WINTRUST, Registration No. 3,933,639, which issued to registration in March 2011; Complainant also owns and uses the domain names Of particular relevance to this matter, Complainant has an extensive presence in the Chicago metropolitan area and has partnered with several local professional and college sports teams to offer co-branded checking accounts and to promote Complainant’s WINTRUST marks in the stadiums of these teams. Respondent is based in the Chicago metropolitan area. Respondent registered the disputed domain name on August 18, 2020. Since registering the disputed domain name, Respondent has used such for a website promoting Respondent’s real estate, investment and brokerage services under the name “Wintrust Realty LLC.” On December 8, 2020, Complainant sent Respondent a demand letter regarding Respondent’s use of the name and mark “Wintrust Realty LLC” and registration and use of the disputed domain name. Respondent did not respond to that letter and Complainant sent a further letter on December 20, 2020. Respondent did not respond to that letter but thereafter included a disclaimer on the website posted at the disputed domain name that simply read “Wintrust Realty LLC Not Affiliated with any Wintrust Company.” The disputed domain name continues to resolve to Respondent’s website. 5. Parties’ Contentions A. Complainant Complainant contends that through its use and registration of multiple WINTRUST marks it has established strong rights in the WINTRUST mark and that the WINTRUST mark in connection with Complainant’s services is well known to consumers in at least the Chicago metropolitan area. Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s WINTRUST mark as it fully incorporates the WINTRUST mark with the non-distinguishing descriptive term “realty”, a term which is descriptive of and related to Complainant’s mortgage lending services and real estate sales services. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) was not granted any rights to use the WINTRUST mark by Complainant, (ii) is using the disputed domain name for commercial gain by falsely suggesting an affiliation with Complainant or to trade off of the goodwill associated with Complainant’s WINTRUST mark, and (iii) was likely aware of Complainant and Complainant’s rights in the WINTRUST mark given that Respondent’s registered address is in close proximity to several of Complainant’s physical locations. Lastly, Complainant contends that Respondent registered and has used the disputed domain name in bad faith as Respondent registered a domain name that fully incorporates Complainant’s WINTRUST mark in order to falsely suggest to the public that Respondent is somehow associated with Complainant. In support of that contention, Complainant notes that given Complainant’s notoriety in the Chicago metropolitan area and the fact that Respondent’s registered address is in close proximity to a number of Complainant’s physical locations, Respondent was likely aware of Complainant and its WINTRUST mark and services. Complainant also notes that it sent two demand letters to Respondent, which Respondent never responded to, and that Respondent continues to use the disputed domain name to attract web users to Respondent’s website for Respondent’s commercial benefit. B. Respondent Respondent did not reply to Complainant’s contentions. On February 23, 2021, the Center received an email from Respondent in which he advised “I will be in touch with you shortly.” No further communication was received from Respondent. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Complainant has provided evidence that it has used a number of marks incorporating WINTRUST alone or in combination with other words for many years, and that it owns a number of trademark registrations for its WINTRUST marks that issued to registration prior to the date that Respondent registered the disputed domain name. With Complainant’s rights in the WINTRUST mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s WINTRUST mark as the disputed domain name fully incorporates the WINTRUST mark. The addition of the word “realty” does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name, as the WINTRUST mark is clearly recognizable in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s WINTRUST mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Complainant has established with much evidence that it owns rights in the name and mark WINTRUST and that it has used its family of WINTRUST marks in connection with financial, investment, mortgage lending, and real estate sales services prior to when Respondent registered and started using the disputed domain name. The question that is thus before the Panel, is whether Respondent’s use of the WINTRUST mark in the disputed domain name for his real estate, investment, and brokerage services is a legitimate and/or fair use. Respondent has not appeared in this proceeding and has not filed any evidence or arguments, although it is clear Respondent is aware of the proceeding as Respondent sent an informal communication to the Center after the proceeding was initiated in which Respondent advised that he would be “in touch shortly.” Respondent currently continues to use the disputed domain name for a website promoting his real estate services under the name “Wintrust Realty LLC” and has included a disclaimer in two places on his website that specifies that “Wintrust Realty LLC Not Affiliated with any Wintrust Company.” Notably, one of the disclaimers is near the bottom of Respondent’s website in small print with surrounding text. The more prominent disclaimer appears above the fold of the home page of Respondent’s website on the left side as follows: “WINTRUST REALTY LLC NOT AFFILIATED WITH ANY WINTRUST COMPANY HENRY JONES Managing Broker & Realtor.” The fact that Respondent changed its website after receiving demand letters from Complainant in December 2020 to include these disclaimers implies to the Panel, at the very least, that Respondent understands that consumers may be confused by the disputed domain name and associated website. WIPO Overview 3.0, section 3.7. Given that Respondent is located in the same geographic area of Complainant with an address in close proximity to several of Complainant’s locations, and given Complainant’s extensive use of WINTRUST in the Chicago metropolitan area and that a simple search on the Internet would have revealed Complainant’s rights in and services under the WINTRUST mark, it appears more likely than not that Respondent was well aware of Complainant when Respondent adopted and started using the disputed domain name for a website promoting Respondent’s real estate services. It thus appears that Respondent registered and is using the disputed domain name, not for any legitimate or fair use purpose, but to attract web users to Respondent’s website based on potential confusion with Complainant’s mark and for purposes of promoting his real estate services. That Respondent is seeking to capitalize on the likely association that consumers (particularly in the Chicago metropolitan area) may make between the disputed domain name and Complainant is heightened by the fact that “Wintrust” appears to be a coined term combining the words “win” and “trust.” While there are common English expressions that use the words “win” and “trust,” such as “to win trust” or “to win someone’s trust,” the combination “wintrust” is on its face an arbitrary use particularly when it comes to identifying a source of goods or services. Indeed, a search of the United States Patent and Trademark Office records by the Panel, for example, did not reveal any applications or registrations for WINTRUST marks other than those owned by Complainant. Consequently, the fact that Respondent chose the identical WINTRUST mark to identify and offer investment and real estate services that either are closely related to or overlap with real estate related services offered by Complainant under its WINTRUST marks, only reinforces that Respondent did so not as a use connected with common English expressions using the words “win” and “trust,” but to seek to unfairly profit at the expense of the rights and goodwill Complainant enjoys in its WINTRUST marks. Simply put, the evidence before the Panel, none of which is contested by Respondent, suggests that Respondent registered a confusingly similar disputed domain name and then used such for purposes of diverting consumers to Respondent’s website. The use of the above noted disclaimers on Respondent’s website do not dispel the potential confusion created by Respondent in using a domain name which appears to be related to Complainant. See, e.g., Thirty & Co. v. Jake Marcum, Marcum Creative, LLC,WIPO Case No. D2016-1212; Educational Testing Service v. Prinn Sukriket,WIPO Case No. D2011-0439. That Respondent chose to use a confusingly similar domain name to promote Respondent’s real estate services is not a legitimate or bona fide use. The fact that some consumers may now associate the disputed domain name with Respondent does not render Respondent’s original registration and use of a confusingly similar disputed domain name into a legitimate use. See, e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. In sum, given that Complainant has established with sufficient evidence that it owns rights in the WINTRUST mark, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(iI) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Here, Respondent has registered a disputed domain name that fully incorporates Complainant’s WINTRUST mark at the head of the disputed domain name with the word “realty”. This combination, as already noted, is likely to be viewed by consumers, particularly in the Chicago metropolitan area where Respondent is based, as suggesting a website related to or authorized by Complainant. The evidence that is before the Panel shows that “Wintrust” is a coined term and that Complainant has extensively promoted its WINTRUST mark and services in the Chicago metropolitan area where Respondent is located. Thus, while Respondent may have only wanted to create a website to promote Respondent’s real estate services, it seems inconceivable that Respondent was not aware of Complainant when Respondent registered and used a confusingly similar disputed domain name to attract and redirect Internet users to Respondent’s website. At the very least, it was either an act of willfull blindness or reckless disregard of the rights Complainant enjoys in its WINTRUST marks. Accordingly, the Panel finds that Complainant succeeds under this 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 Georges Nahitchevansky
WINTRUST FINANCIAL CORPORATION, Registration No. 2,165,693, which issued to registration in June 1998;
WINTRUST BANK, Registration No. 2,296,831, which issued to registration in November 1999;
WINTRUST MORTGAGE, Registration No.3,666,386, which issued to registration in August 2009;
WINTRUST WEALTH MANAGEMENT, Registration No. 3,989,512, which issued to registration in July 2011; and
WINTRUST INVESTMENTS, Registration No. 5,726,218, which issued to registration in April 2019.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: April 14, 2021
Full & Egal Universal Law Academy