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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LPL Financial LLC v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Faik Slappendel

Case No. D2021-4000

1. The Parties

The Complainant is LPL Financial LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Faik Slappendel, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <lplfinancial.one> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2022, 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 December 6, 2022, 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 December 10, 2022.

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 December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. On January 6, 2022, the Center received an email communication from an apparent third party requesting an extension of the due date for Response in an attempt to settle the matter amicably. The Complainant did not reply to the Respondent’s request. A further communication was received the third party on January 12, 2022. The Respondent did not submit any formal Response. Pursuant to paragraph 6 of the Rules, the Center notified the commencement of Panel appointment process on January 14, 2022.

The Center appointed Alistair Payne as the sole panelist in this matter on January 21, 2022. 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 Complainant is a listed public company on the NASDAQ exchange and was founded in 1989. It operates in the retail financial advice market and is considered the largest independent broker-dealer in the United States. It provides an integrated platform of brokerage and investment advisory services to more than 19,100 financial professionals and approximately 800 financial institutions, managing over USD 1.1 trillion in advisory and brokerage assets.

The Complainant owns United States Trademark Registration No. 1801076 for LPL, registered on October 26, 1993. It also owns United States Trademark Registration No. 3662425 for LPL FINANCIAL and device registered on August 4, 2009.

In addition, the Complainant owns many domain names consisting of or containing “lpl”, including <lpl.com> registered in 1994, from which it operates its main corporate website, as well as <lpl.net>, <lpl-financial.com>, and <lplaccountview.com>. The Complainant’s parent company, LPL Holdings, Inc., is the owner of the branded new generic Top-Level Domains (“gTLDs”) “.lpl” and “.lplfinancial”. It has a strong social media presence with an official Facebook page that has over 18,000 likes and over 23,000 followers on Twitter.

The disputed domain name was registered on August 7, 2021, and resolves to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant says that it owns trade mark registrations for LPL and LPL FINANCIAL as set out above. It submits that the inclusion of the Complainant’s LPL and LPL FINANCIAL trade marks in their entirety in the disputed domain name is sufficient to establish confusing similarity between the disputed domain name and the Complainant’s LPL and LPL FINANCIAL trade marks. It says that the disputed domain name is essentially identical to the Complainant’s LPL FINANCIAL trade mark, simply omitting the space between the elements “lpl” and “financial” and that a space is incapable of representation per se in a domain name. For these reasons, the Complainant submits that the disputed domain name is confusingly similar to the LPL and LPL FINANCIAL trade marks in which the Complainant has rights.

The Complainant submits that the Respondent has not received any licence or other authorisation of any kind to make use of the Complainant’s trade marks in a domain name or otherwise and cannot assert that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Nor, says the Complainant, is there any evidence to suggest that the Respondent is commonly known by the disputed domain name, or that it has acquired or applied for any trade mark registrations for “lpl” or “lpl financial”. Neither, according to the Complainant, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. In circumstances that it is not making any use of the disputed domain name the Complainant says that it is merely making a passive holding which cannot amount to legitimate noncommercial or fair use.

The Complainant says that its LPL and LPL FINANCIAL trade marks are inherently distinctive and well known in connection with the Complainant’s financial advisory services. It says that the Complainant’s trade marks have been continuously and extensively used for well over 10 years and have as a result acquired considerable reputation and goodwill. The Complainant submits that the Respondent could not credibly argue that it did not have knowledge of the Complainant and of its rights in the LPL and LPL FINANCIAL trade marks when it registered the disputed domain name in August 2021, some 28 years after the Complainant’s first registration of its LPL trade mark.

The Complainant notes that the disputed domain name resolves to an inactive website. It says that this does not prevent a finding of use in bad faith under the doctrine of passive holding. In terms of factors considered by panels in applying the doctrine of passive holding it says that the Complainant’s LPL and LPL FINANCIAL trade marks are well known internationally and as a result of longstanding and widespread use have become closely associated with the Complainant. The Complainant notes that the Respondent made use of a privacy shield and says that the disputed domain name carries a high risk of affiliation with the Complainant’s trade marks and submits that there is no plausible good faith use to which the disputed domain name could be put that would not have the effect of misleading consumers as to its source or affiliation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In separate emails received on January 6 and 12, 2022, an apparent third party acknowledged receipt of the Complaint and expressed an intent to seek settlement with the Complainant, but the Complainant did not reply to the third party’s communications.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns United States Trademark Registration No. 1801076 for LPL and United States Trademark Registration No. 3662425 for LPL FINANCIAL and device. The acronym “LPL” and word “financial” are clearly the dominant elements of the latter mark and the Panel finds that the Complainant owns registered trade mark rights in both the LPL and LPL FINANCIAL marks for the purposes of this limb of the Policy.

The disputed domain name wholly incorporates both the LPL and the LPL FINANCIAL marks and is therefore confusingly similar to marks in which the Complainant has registered trade mark rights under the Policy. Accordingly, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not authorised or permitted the Respondent to use its trade marks in a domain name, or otherwise. It has also asserted that there is no evidential basis for the Complainant to say that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has also submitted that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name or that it has acquired or applied for any trade mark registrations for “lpl” or “lpl financial”. In addition, the Complainant has asserted that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. It says that merely making a passive holding cannot amount to legitimate noncommercial or fair use.

Furthermore, considering the identical nature of the disputed domain name to the Complainant’s LPL FINANCIAL trade mark and the distinctive nature of the acronym, and registered trade mark, LPL, the Panel finds that the disputed domain name carries a high risk of implied affiliation to the Complainant, contrary to the fact.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in each of the disputed domain names. As the Respondent has not rebutted the Complainant’s case the Panel finds for this reason and as set out under Part C below, that the Complainant has successfully made out its case under this element of the Policy

C. Registered and Used in Bad Faith

The disputed domain name was registered in August 2021 many years after the registration of the Complainant’s LPL and LPL FINANCIAL trade marks. The LPL element of these marks is distinctive and the marks have obviously developed a considerable amount of renown in connection with the Complainant’s financial advisory services in the United States based on the very substantial size of the Complainant’s business. The Complainant’s business also has a substantial online and reasonably sizeable social media presence. In these circumstances, it is most likely that the Respondent was well aware of the Complainant and of its rights in the LPL and LPL FINANCIAL trade marks when it registered the disputed domain name in August 2021, some 28 years after the Complainant’s first registration of its LPL trade mark.

The disputed domain name has not been actively used by the Respondent and resolves to an error page.

Previous panels have considered various factors in determining whether holding disputed domain names amounts to a passive holding in bad faith, or not as set out at section 3.3 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition. The factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put.

In this case, the LPL and LPL FINANCIAL marks are distinctive in the financial services field and appear to enjoy a substantial level of repute and recognition in the United States in connection with the Complainant’s business. The Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use and has used a privacy service in an effort to conceal its identity. Finally, considering the level of distinctiveness and repute attaching to the LPL mark, the Complainant’s very large business in the United States under that mark, its developed Internet and social media presence and the disputed domain name’s similarity to the Complainant’s own key domain names such as <lpl-financial.com>, it seems extremely implausible that the disputed domain name was registered for a purpose other than to somehow use it in bad faith for the Respondent’s own gain.

As a result, the Panel finds that the disputed domain name has been registered and used in bad faith and the Complaint also 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 <lplfinancial.one> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: February 4, 2022

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