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 / Benjamin Nash, Clubarc, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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 the Complainant on October 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. An informal communication from the Respondent was sent to the Center on October 7, 2021. The Complainant filed an amended Complaint October 12, 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 the Respondent of the Complaint, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit a formal response. Accordingly, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with the panel appointment process on November 3, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 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.
4. Factual BackgroundThe Complainant was founded in 1989 through the merger of two brokerage firms, Linsco and Private Ledger. The Complainant is a leader in the retail financial advice market, and is considered the largest independent broker-dealer in the United States. Since 2010, the Complainant has been publicly traded on the NASDAQ under the stock symbol “LPLA”. As of June 30, 2021, the Complainant 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 has over 4,800 employees, and in 2020 its net revenue reached over USD 5.8 billion, with a gross profit of over USD 2.1 billion.
The Complainant is the owner of several trademark registrations, including United States Trademark Registration No. 1801076 (registered on October 26, 1993) for the word trademark LPL, and United States Trademark Registration No. 3662425 (registered on August 4, 2009) for a stylized trademark containing the text “LPL Financial” (the “LPL FINANCIAL trademark”).
The Complainant owns many domain names consisting of or containing its LPL word trademark, including
The disputed domain name was registered on May 13, 2021. The Complainant has provided screenshots, taken on October 5, 2021, showing the disputed domain name resolved to a website that purports to offer various financial services, including brokerage services for securities, forex, cryptocurrencies, and stocks.
The Complainant has also provided a copy of an email sent to an Internet user on June 18, 2021, from an email address that uses the disputed domain name, purporting to be from a broker. The email followed a phone call from the purported broker, which resulted from the Internet user clicking on an advertisement for cryptocurrency investment. The email contained a link to a broker profile on the United States Financial Industry Regulatory Authority website, which was for a broker working for an entity unrelated to either the Complainant or the Respondent. The email requested the recipient to download a software program to allow remote access, and to set up a cryptocurrency wallet.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name comprises the Complainant’s LPL trademark in its entirety as its leading element; (ii) the disputed domain name differs from the Complainant’s LPL FINANCIAL trademark only by the omission of the space between the two words (a space being incapable of representation per se in a domain name) and the substitution of the word “financial” with the visually, phonetically, and semantically similar term “finances”, which is a minor alteration; (iii) the generic Top-Level Domain (“gTLD”) “.com” may be disregarded as it is viewed as a standard registration requirement.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent has not received any license or other authorization of any kind to make use of the Complainant’s trademarks in a domain name or otherwise; (ii) the Respondent cannot assert 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; (iii) the Respondent has been using the disputed domain name in an attempt to promote a fictitious business, and is engaged in a fraudulent email scheme targeting unsuspecting Internet users, in an attempt to induce them into making payments for services that the Respondent has no intention of providing; (iv) the Respondent may also make use of software to gain remote access to Internet users’ computers in order to take control of their cryptocurrency wallets; (v) there is no evidence to suggest that the Respondent is commonly known by the disputed domain name; (vi) the disputed domain name was registered using a privacy service, and the underlying registrant details that have been disclosed by the Registrar of the disputed domain name list “Benjamin Nash”, which bears no resemblance to the disputed domain name whatsoever; (vii) there is no evidence of the Respondent having acquired or applied for any trademark registrations for LPL or LPL FINANCES, or any variation thereof, as reflected in the disputed domain name; (viii) the use of a domain name in connection with a fraudulent email scheme cannot constitute legitimate noncommerical or fair use of a domain name under the Policy; and (ix) the disputed domain name, comprising the Complainant’s LPL trademark together with the term “finances”, carries with it a high risk of implied affiliation with the Complainant as a provider of financial-advisory services, and therefore cannot give rise to any legitimate claim of fair use.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith because: (i) as the term LPL FINANCIAL is distinctive and is exclusively associated with the Complainant, the Respondent could not credibly argue that it did not have knowledge of the Complainant and its rights in the LPL and LPL FINANCIAL trademarks when registering the disputed domain name some 28 years after the Complainant’s first registration of its LPL trademark; (ii) the Respondent’s knowledge of the Complainant and its rights in the LPL and LPL FINANCIAL trademarks may be inferred from the Respondent’s use of the Complainant’s logo in the signature of emails sent from the email address using the disputed domain name; (iii) the Respondent appears to have made use of the Complainant’s LPL trademark in order to create a misleading impression of association between the disputed domain name (including as used for email), the Respondent’s website, and the Complainant, in the furtherance of a fraudulent email scheme; (iv) the registration of the disputed domain name using a privacy service to mask the Respondent’s identity amounts to further evidence of the Respondent’s bad faith; (v) the Respondent appears to be using the disputed domain name in the furtherance of a fraudulent email scheme, aimed at misleading unsuspecting Internet users into allowing remote access to Internet users’ computers, with a view to obtaining personal and/or financial information that may be used to commit further acts of fraud; and (vi) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the web page to which the disputed domain name resolves, as well as the source of emails sent from an email address created under the disputed domain name, and the goods and services offered therein.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. The Respondent did, however, send an email to the Center on October 7, 2021, stating: “Hello. Please clarify the issue.”
6. Discussion and Findings A. Identical or Confusingly SimilarOnce the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark LPL followed by the word “finances”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the word “finances” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s LPL trademark. Furthermore, the disputed domain name consists of the textual component of the Complainant’s stylized LPL FINANCIAL trademark, with removal of the space between the two words and substitution of the word “financial” with the visually, phonetically, and semantically similar word “finances”. The word substitution does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s stylized trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its LPL or LPL FINANCIAL trademarks. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website that purports to offer financial services similar to those offered by the Complainant, and was used in an email address for a communication that impersonated an unrelated person and requested the recipient to undertake certain actions that would likely result in the recipient being the victim of financial loss. Given the apparently fraudulent nature of the website and the email communication, these uses of the disputed domain name are neither a bona fide use nor a legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name was registered many years after the Complainant first registered its LPL and LPL FINANCIAL trademarks. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademarks, given that the disputed domain name consists of the Complainant’s LPL trademark followed by the word “finances”, which relates to the Complainant’s services, and that it consists of the textual component of the Complainant’s LPL FINANCIAL stylized trademark with a confusingly similar word substitution. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
Andrew F. Christie
Sole Panelist
Date: November 25, 2021