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 / Stephen Grey, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2021, 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 1, 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 December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on December 23, 2021.
The Center appointed Marylee Jenkins as the sole panelist in this matter on January 14, 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 BackgroundBased on the review of the uncontested evidence submitted by the Complainant, the Panel finds that the Complainant is the owner of several trademark registrations for the word mark LPL and the design mark LPL FINANCIAL in the United States, including United States Trademark Registration No. 1,801,076 (filed on January 22, 1993, registered on October 26, 1993) in International class 36; and United States Trademark Registration No. 3,662,425 (filed on October 25, 2007, registered on August 4, 2009) in International class 36 (individually and collectively referred to as the “Complainant’s Mark”). The Complainant also owns several domain names incorporating the Complainant’s Mark, including
The Domain Name
The Complainant states that it was founded in 1989 through the merger of two brokerage firms - Linsco and Private Ledger. The Complainant also states that it engages in retail financial advice market, and is considered the largest independent broker-dealer in the United States. The Complainant states that it employs 4,800 people throughout the United States and serves more than 19,100 financial professionals.
The Complainant states that it owns and has obtained several trademark registrations for the Complainant’s Mark, including those cited above, and that none of these registrations have been abandoned, cancelled, or revoked. Further, the Complainant states that it has made significant investments over the years to advertise, promote, and protect the Complainant’s Mark through various forms of media, including the Internet. Based on its extensive use and trademark registrations, the Complainant alleges that it owns the exclusive right to use the Complainant’s Mark and that the Complainant’s Mark is well known.
The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s Mark as it incorporates the Complainant’s Mark completely. The Complainant then alleges that the Respondent has added only the country code Top-Level Domain (“ccTLD”) for the Cocos Islands “.cc” to the Complainant’s Mark. The Complainant further alleges that this minor difference suggests to users that the Domain Name is related to the Complainant, which only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s Mark. The Complainant also alleges that the Complainant’s Mark is highly distinctive.
The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering the Domain Name that incorporates the Complainant’s Mark in its entirety with just a lack of a space between “lpl” and “financial” and a ccTLD, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s goods and services, and to mislead Internet users and impersonate the Complainant.
The Complainant alleges that it has not authorized the Respondent to register domain names incorporating the Complainant’s Mark, which evinces a lack of rights or legitimate interests in the Domain Name. The Complainant further notes that it has neither business relations with nor knowledge of the Respondent.
The Complainant alleges that the Respondent is using the Domain Name to suggest that the Respondent is affiliated with or connected to the Complainant. The Complainant states that the Respondent included on the website at the Domain Name a logo that is a modified version of one of the Complainant’s marks. The Complainant further states that the Respondent’s website at the Domain Name includes the same physical address as one of the Complainant’s primary offices in San Diego, California, United States and an “About Us” page that matches a previous page on the Complainant’s website. The Complainant alleges that the Respondent’s website offers financial advisory services related to cryptocurrency investments. The Complainant alleges that this is an attempt to attract the Complainant’s customers to the Respondent’s website and to appear as though it were the Complainant or affiliated with the Complainant. The Complainant states that the Respondent is not using the Domain Name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name as allowed under the Policy.
The Complainant alleges that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business by the use of the Complainant’s Mark and logo. The Complainant further alleges that the Respondent’s use of the Complainant’s Mark, or any minor variation of it, strongly implies bad faith.
The Complainant alleges that at the time of the registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s Mark and that the registration of a domain name containing well-known trademarks constitutes bad faith per se. The Complainant further alleges that the mark LPL FINANCIAL has become more well known as it has been used continuously and extensively for over ten years. The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering the Domain Name incorporating the Complainant’s Mark in its entirety, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users and impersonate the Complainant. By creating this likelihood of confusion between the Complainant’s Mark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, the Complainant alleges that the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s Mark in order to increase traffic to the Respondent’s website.
The Complainant further alleges that the Respondent, at the time of the initial filing of the Complaint, had employed a privacy service to hide its identity, which supports an inference of bad faith registration and use. Based on the above, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Mark, and that the Respondent should be found to have registered and used the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy states that the respondent is to submit to a mandatory administrative proceeding in the event that a third party (i.e., complainant) asserts to an ICANN-approved administrative dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark.
A review of the second-level domain “lplfinancial” of the Domain Name shows that the domain comprises the Complainant’s trademark LPL FINANCIAL in its entirety with only the ccTLD for the Cocos Islands “.cc” added at the end. With the dominant portion of the Domain Name being the Complainant’s distinctive trademark LPL FINANCIAL, the addition of the ccTLD in the Domain Name does prevent a finding of confusingly similarity for the purposes of the Policy.
Accordingly, based on the uncontested evidence submitted by the Complainant, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate InterestsThere is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed, or authorized the Respondent to register or use the Complainant’s Mark in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Name, as an individual, business, or otherwise. The uncontested evidence clearly shows that the Complainant had well-established rights in and to the Complainant’s Mark in the United States and which substantially predate the Respondent’s registration of the Domain Name. In addition, the Complainant has presented sufficient evidence to show that the Respondent was using and is continuing to use the Domain Name and the corresponding unauthorized website to misleadingly divert Internet users, attempting to find the Complainant and its services. Particularly, the Respondent was using the Domain Name to confuse Internet users into believing that the Respondent was connected to, sponsored by, or affiliated with the Complainant. The Respondent’s use of the Domain Name along with the corresponding website does not constitute a bona fide offering of goods or services but was clearly for its own commercial gain. The incorporation of the Complainant’s mark in its entirety in the Domain Name further reinforces the Panel’s finding that Respondent intended to mislead Internet users via the implied affiliation caused by the Domain Name itself and the corresponding website.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad FaithBased upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent had actual knowledge of the Complainant’s Mark when registering the Domain Name. This finding is supported by the uncontested and extensive evidence showing that the registration of the Domain Name by the Respondent in no way predates the Complainant’s earlier registration dates for the Complainant’s Mark. A review of the Complainant’s trademark registrations for the Complainant’s Mark shows that such registrations well predate the Respondent’s Domain Name registration. Along with the submitted evidence of the Complainant’s own website, the Complainant has more than sufficiently shown that the Respondent registered the Domain Name in bad faith for the purpose of intentionally diverting Internet users, looking online for the Complainant and its services, to the Respondent’s unauthorized website. As the uncontested evidence further demonstrates, the Respondent was not making any type of legitimate noncommercial or fair use of the Domain Name, but was clearly deceiving Internet users by using the Complainant’s Mark, its logo, its office address, and text from the Complainant’s website. The Respondent’s deception was also a disruption to the Complainant and its business. Coupled with the Respondent’s failure to provide accurate contact information in the Domain Name registration, such only confirms a finding of the Respondent’s bad faith registration and use of the Domain Name.
The Panel accordingly concludes that the Respondent registered and has been and is using the Domain Name to intentionally attract Internet users searching for the Complainant and its services to the Respondent’s unauthorized website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as well as its website as to the source, sponsorship, affiliation, or endorsement thereof. The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name
Marylee Jenkins
Sole Panelist
Date: February 7, 2022