ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LPL Financial LLC v. Eszter Hazai, Domain Science Kft Case No. D2022-3502 1. The Parties The Complainant is LPL Financial LLC, United States of America ("United States" or "US"), represented by Hogan Lovells (Paris) LLP, France. The Respondent is Eszter Hazai, Domain Science Kft, Hungary. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2022. On September 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on September 28, 2022. The Complainant filed an amended Complaint on October 3, 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 October 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2022. The Respondent did not submit a formal response. Accordingly, the Center notified the commencement of Panel appointment process on October 27, 2022. page 2 The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on November 2, 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 an independent broker-dealer in the retail financial advice market in the US. The Complainant was founded in 1989 and has been publicly traded on the "NASDAQ" under "LPLA" since 2010. The Complainant has acquired considerable goodwill and reputation in its LPL brand in the financial service sector. The Complainant holds the trademark registrations for the marks LPL and LPL FINANCIAL, including, inter alia: - US Trademark Registration No. 1801076 for LPL, registered on October 26, 1993, and - US Trademark Registration No. 3662425 for LPL FINANCIAL (device), registered on August 4, 2009. Both registrations have been duly renewed and are still valid. These registrations will jointly be referred to, in singular, as the "Trademark". The Complainant owns many domain names consisting of or containing "lpl", including , registered in 1994, from which it operates its main corporate website, as well as , amongst many others. The disputed domain name is registered on November 8, 2021, and resolves to a parking page displaying commercial links targeting, among others, the Complainant's field of activity. 5. Parties' Contentions A. Complainant The Complainant states, in summary and in so far as relevant, the following. The Complainant was founded in 1989 through the merger of the brokerage firms Linsco and Private Ledger. It operates in the retail financial advice market in the United States as an independent broker-dealer. The Complainant serves independent financial advisors and financial institutions, providing them with the technology, research, clearing and compliance services, and practice management programs they need to create and grow their practices. Since 2010, the Complainant has been publicly traded on the NASDAQ under "LPLA". As of June 30, 2022, the Complainant provides an integrated platform of brokerage and investment advisory services to more than 20,000 financial professionals and approximately 1,100 financial institutions, managing over USD 1 trillion in advisory and brokerage assets. The Complainant has over 6,000 employees, with its primary offices in San Diego, California; Fort Mill, South Carolina; Boston, Massachusetts; and Austin, Texas. In the second quarter of 2022, the Complainant's net revenue reached over USD 2 billion, with a gross profit of over USD 711 million. The Complainant has acquired considerable goodwill and reputation in the Trademark in the context of the financial-services sector. The Complainant submits that the disputed domain name is confusingly similar to the Trademark, because it comprises the Trademark in its entirety as its leading element, and the addition of the geographical term "lasvegas" to it does not prevent a finding of confusing similarity. page 3 The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not received any licence or other authorization of any kind to make use of the Complainant's Trademark in a domain name or otherwise. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name resolves to a parking page displaying sponsored links to services that are in direct competition with those offered by the Complainant. Internet users seeking the Complainant, particularly those based in Las Vegas, Nevada, are likely to be misled by the disputed domain name, and in turn diverted to the Complainant's competitors. The Complainant further submits that the Respondent's listing of the disputed domain name for sale does not amount to bona fide use of the disputed domain name, where the disputed domain name comprises and is confusingly similar to the Trademark. The Complainant also submits that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. Finally, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith since (1) the Complainant 's LPL and LPL FINANCIAL trademarks are well-known in connection with the Complainant 's financial advisory services, (2) the Respondent could not credibly argue that it did not have knowledge of the Complainant and the its trademark rights registering the disputed domain name in November 2021, some 28 years after the Complainant's first registration of its Trademark, and (3) the Respondent's knowledge of the Complainant and its trademarks may be inferred from the fact that the composition of the disputed domain name comprises the Trademark in their entirety, (4) the Respondent's use of the disputed domain name as it resolves to a parking page displaying sponsored links to the Complainant's competitors, (5) the disputed domain name is offered for sale, with a buy-now price of USD 1,449.-, which in the circumstances of the present case supports the finding that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the Trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name. The disputed domain name resolves to a parking page displaying sponsored links. The disputed domain name comprises the Trademark, together with the geographic term "lasvegas", thereby creating a risk of implied affiliation with the Complainant, and further noting that the sponsored links on the parking page to which the disputed domain name resolves promote goods and services in competition with those offered by the Complainant, the Complainant submits that the Respondent has sought to generate click-through revenue from Internet traffic seeking the Complainant that is misled to the Respondent's website. For these reasons, the Complainant submits that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves as well as the goods and services advertised therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not formally reply to the Complainant's contentions. In its informal email communication of September 28, 2022, the Respondent stated the following: "I have received the email that our domain name, lplfinanciallasvegas.com has been locked and disabled due to a pending UDRP dispute. Unfortunately, I have not received the legal documents. I hereby, as Respondent deny that the domain has been registered and used in bad faith. I have never heard of the Complainant prior to the Complainant's first approach last week. The company is not present in page 4 Hungary, not even in Europe, as I have searched for them after receiving the email. They have never contacted me regarding this domain. The domain name was dissolved in November, 2021 and I registered the disputed domain name after its initial expiration. I believe that these are a clear indication of my unwillingness to facilitate in any way any infringement of a third party's rights. Insisting on the fact that the domain has been registered in good faith, I hereby claim that I do not want to continue on holding this domain name and authorize GoDaddy to take any further actions so that the domain name can be removed from our account." 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it is the owner of the Trademark. The disputed domain name incorporates the entirety of the Complainant's marks LPL and LPL FINANCIAL with the mere addition of the geographical term "lasvegas". The Complainant's Trademark is clearly recognizable in the disputed domain name, and the addition of this term does not prevent a finding of confusing similarity. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element, the Complainant must make out a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. Once the Complainant fulfils this requirement, the Respondent needs to present evidence showing that it does have rights to or legitimate interests in the disputed domain name. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Complainant alleges that the Respondent lacks rights to or legitimate interests in the disputed domain name for the reasons set out in section 5.A above. The Panel finds that the Complainant has fulfilled the obligation to establish prima facie that the Respondent has no rights to or legitimate interests in the disputed domain name. Other than denying knowledge of the Complainant and stating that it registered the disputed domain name after its "initial expiration", the Panel finds that the Respondent has not rebutted the arguments of the Complainant and/or shown rights to or legitimate interests in the disputed domain name. Moreover, the page 5 Panel notes that the Respondent has stated that it does not want "to continue on holding this domain name" and authorizes "GoDaddy to take any further actions so that the domain name can be removed from our account". The Panel concludes that the Respondent does not have rights to or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element of the Regulations. C. Registered and Used in Bad Faith Although the Respondent states that it had never heard of the Complainant prior to the Complainant's "first approach", based on the information and the evidence in the case file the Panel finds that at the time of registration of the disputed domain name, the Respondent was or should have been aware of the Complainant's Trademark. The Complainant has been very well known for long time and a trademark register search, or even a simple online search prior to the registration of the disputed domain name, would have informed the Respondent of the existence of the older Trademark and the Complainant's extensive use of the Trademark as a source identifier. Moreover, the construction of the disputed domain name itself strongly suggests that the Respondent was aware of the Complainant's Trademark: the disputed domain name replicates the Trademark in its entirety, with the addition of the geographical term "lasvegas". The disputed domain name is now being offered for sale, which in the circumstances of the present case supports the finding that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name. Based on the information and the evidence provided by the Complainant, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parking page displaying sponsored links that appear to be based on keywords such as "finance", "financial", "advisor", and "investment", which promote financial advisory services in competition with those offered by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. Although the Respondent states that the disputed domain name was registered in good faith and that it registered it after its "initial expiration", the Panel notes that the Respondent did not provide a reason for its selection of the disputed domain name or any evidence of actual or contemplated good faith use. For the above reasons, the Panel finds that the Respondent has registered and uses the disputed domain name in bad faith and concludes that the requirements of the third element under the Policy have been met. 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 be transferred to the Complainant. /Richard C.K. van Oerle/ Richard C.K. van Oerle Sole Panelist Date: November 14, 2022
Full & Egal Universal Law Academy