Complainant is LPL Financial LLC, United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Eric Conrado, United States.
The disputed domain name <lplfinancialmn.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and 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 June 25, 2021, providing the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 28, 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on August 4, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on August 11, 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.
Complainant is an American financial-services company. It is an independent broker-dealer operating in the United States, and it provides services to financial advisors and financial institutions. It is the proprietor of the following trademark registrations:
- United States Trademark No. 1,801,076 for LPL (word mark), registered on October 26, 1993 for services in class 36;
- United States Trademark No. 3,662,425 for LPL FINANCIAL (device mark), registered on August 4, 2009 for services in classes 36 and 42.
Complainant operates its primary business website at the domain name “www.lpl.com”. It has also registered other domain names containing its LPL and LPL FINANCIAL marks, such as <lpl.net> and <lpl-financial.com>. Moreover, Complainant owns the generic Top-Level Domains (“gTLDs”) “.lpl” and “lplfinancial”.
The disputed domain name was registered by Respondent on February 10, 2021. At the time of this Decision, it does not resolve to an active website. The record contains evidence that the disputed domain name previously resolved to a website of a business calling itself “LPL Financial” and purporting to offer bookkeeping and tax services in Minnesota, United States. The record contains evidence that, by the time of the filing of the Complaint, the disputed domain name resolved to a hosted parking page in the Russian language.
Complainant’s contentions may be summarized as follows:
Complainant states that it was formed in 1989 through the merger of brokerage firms Linsco and Private Ledger. It is a leader in the retail financial advice market and is considered the largest independent broker-dealer in the United States. It has been traded on the NASDAQ exchange since 2010 under the symbol “LPLA”. It serves over 17,600 financial professionals and 800 financial institutions, has over 4,800 employees around the United States, and in 2020 had net revenue over USD 5.8 billion. It has made substantial investments to develop its online presence, including through activities on social-media platforms.
Under the first element, Complainant states that it owns trademark registrations for LPL and LPL FINANCIAL, and the disputed domain name comprises Complainant’s LPL mark in its entirety as its leading element. The addition of the letters “MN”, ostensibly to allude to Minnesota, does not prevent a finding of confusing similarity.
Under the second element, Complainant states that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name resolved to a website that was a clone of an unrelated third-party business. While Respondent’s website purported to be that of a business in the United States, Complainant notes that it was hosted by a hosting provider located in the Russian Federation. Respondent’s website listed biographies for three persons who are in fact listed on the website of the third-party business that Respondent had cloned. The physical address listed on Respondent’s website appears to be the physical address of a bank in Minnesota. Complainant submits that Respondent has been using the disputed domain name in an attempt to promote a fictitious business, using Complainant’s LPL FINANCIAL trademark to lend a veneer of authenticity to this effort. Such activities carry a high risk of fraud. Respondent is not commonly known by the disputed domain name, nor is it making a legitimate noncommercial use of the disputed domain name.
Under the third element, Complainant states that the LPL and LPL FINANCIAL marks are inherently distinctive and well-known in connection with Complainant’s financial advisory services. The marks have been continuously in use for over 20 years and have acquired considerable reputation and goodwill worldwide. Complainant submits that Respondent could not credibly argue that it lacked knowledge of Complainant and registered the disputed domain name in full knowledge of Complainant’s rights.
Complainant states that Respondent used the disputed domain name in connection with a website that appears to have cloned the website of an unrelated third-party financial services company while purporting to operate under a name corresponding to Complainant’s LPL FINANCIAL mark. Such acts contain various indicia of fraud. While the disputed domain name later resolved to a hosted parking page, the continued ownership of the disputed domain name by Respondent amounts to a continuing abusive use.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Complainant has provided evidence establishing that it has trademark rights in the LPL and LPL FINANCIAL marks through registrations in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s LPL and LPL FINANCIAL marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name comprises Complainant’s LPL FINANCIAL mark in its entirety, followed by the letters “mn”. It is the consensus view of UDRP panels that, in such cases, the addition of terms or letters does not prevent a finding of confusing similarity because Complainant’s mark is clearly recognizable within the disputed domain name. See, for example, WIPO Overview 3.0, section 1.8, and UDRP cases such as Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679.
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”), for example, “.com” in this case, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The circumstances stated in the Complaint, Amended Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and is not commonly known by the disputed domain name. The disputed domain name contains Complainant’s well-established mark in its entirety (being highly similar to Complainant’s mark), thereby suggesting sponsorship or endorsement by the trademark owner. See, for example, WIPO Overview 3.0, section 2.5.1.
The Panel is satisfied that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, 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.
Respondent has not proved rights or legitimate interests. Further, there is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. Rather, the evidence before the Panel indicates that Respondent registered the disputed domain name to set up scheme to pass itself off as operating a business under a name identical to Complainant’s. Such fraudulent use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed 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 that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed 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) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its registered LPL and LPL FINANCIAL marks predate the registration of the disputed domain name by more than two decades. The disputed domain name reflects Complainant’s marks in their entirety, together with the letters “mn”. The Panel accepts as credible Complainant’s contention that these letters refer to Minnesota, where Respondent purported to be operating a business. Such circumstances indicate that Respondent registered the disputed domain name with full knowledge of Complainant’s rights. On such facts, the Panel finds that the disputed domain name was registered in bad faith. See, for example, Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071; Sonae S.G.P.S., S.A. v. Jose Alberto Oliveira, WIPO Case No. D2000-1429.
The Panel finds that Respondent has demonstrated bad faith by using the disputed domain name for a website that has copied the site of a third party and through which Respondent held itself out as operating a business called “LPL Financial”. There are no facts available that would offer any good-faith explanation for this website. It is clearly fraudulent. Such conduct is indicative of bad faith use of the disputed domain name.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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 <lplfinancialmn.com> be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: August 25, 2021