WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LPL Financial LLC v. Trever Phalms and Brentwood Towers

Case No. D2015-0052

1. The Parties

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

The Respondents are Trever Phalms of New Haven, United States and Brentwood Towers of Pittsburgh, United States (the “Respondents”).

2. The Domain Name and Registrar

The disputed domain names <lplfinance.com> and <lplfinancialadviser.com> (the “Disputed Domain Names”) are registered with Todaynic.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2015. On January 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 16, 2015.

The Center appointed Lynda M. Braun as the sole panelist in this matter on March 2, 2015. 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.

The Complainant submitted a request for consolidation in this proceeding. In the case of complaints brought against more than one respondent, consolidation may proceed where the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Panel submits that the criteria set out above are met and thus, accepts consolidation in the present case. 1

The Panel has the discretion to determine the correct language of the administrative proceeding. Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. This Panel concludes that the reasonable and appropriate language for this proceeding is English.

4. Factual Background

The Complainant is the largest independent broker-dealer, the fourth largest overall advisor in the United States and a leading independent consultant to retirement plans. The Complainant was founded in 1989 through the merger of two brokerage firms and has constantly grown and developed considerable goodwill and renown in the financial advising market in the United States. In 2010, the Complainant went public and is trading in NASDAQ under “LPLA”. Today, the Complainant provides an integrated platform of brokerage and investment advisory services to more than 17,000 financial professionals, including 13,600 independent financial advisors and financial advisors at more than 700 financial institutions across the United States. The Complainant’s nationwide network of independent investment advisors is based in more than 4,500 branch offices throughout the United States. In addition, the Complainant currently has approximately 3,397 employees, with its primary offices in Boston, Massachusetts, Charlotte, North Carolina and San Diego, California.

The Complainant owns and has consistently and exclusively used the trademarks LPL and LPL FINANCIAL (the “LPL Marks”) in connection with its financial services for approximately 25 years. In particular, the Complainant owns U.S. Trademark Registration No. 1801076, for LPL, registered on October 26, 1993 for services in International Class 36. The Complainant further owns U.S. Trademark Registration No. 3662425, for LPL FINANCIAL and design, registered on August 4, 2009 for services in International classes 36 and 42.

In addition to its trademark registrations, the Complainant owns many domain names incorporating its LPL Marks. These include, but are not limited to, <lpl.com>, <lpl.net>, <lpl-financial.com>, <advisorlpl.com>, <advisorslpl.com>, <advisorslpl.net>, <joinlpl.com>, <lplaccountview.com>, <lplbenefits.com>, <lplconnect.com>, <lplfinancialconnect.com>, <lpl-independent- advisor.com> and <lpl-independent-advisor.net>. The Complainant operates its official website at “www.lpl.com”.

The Respondents registered the Disputed Domain Names on May 7, 2014, <lplfinance.com>, and June 20, 2014, <lplfinancialadviser.com>, long after the Complainant began to use the LPL Marks. According to an annex to the Complainant’s Complaint, after clicking on the Disputed Domain Names, the websites to which the Disputed Domain Names resolved stated that they were affiliated to or sponsored by the Complainant. In particular, the Complainant submitted several pages of screen shots demonstrating that the websites prominently displayed the Complainant’s LPL Marks along with the terms “Financial Adviser” to offer finance-related services, precisely the types of services provided by the Complainant. As of the writing of this decision, however, the websites were no longer active.

On October 27, 2014, the Complainant’s lawyers sent a cease and desist letter to one of the Respondents, requesting that the use of the Disputed Domain Name, <lplfinancialadviser.com> and any other reference to the LPL Mark be discontinued. The Respondent did not reply to the Complainant’s cease and desist letter.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Names are confusingly similar to the Complainant’s trademarks.

- The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

- The Disputed Domain Names were registered and are being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Names from the Respondents to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondents

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Disputed Domain Names:

(i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) That the Respondents have registered and are using the Disputed Domain Names in bad faith.

These elements are discussed below.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the LPL Marks based on longstanding use and fame. The Disputed Domain Names <lplfinance.com> and <lplfinancialadviser.com> consist of the LPL Marks followed by the descriptive words “finance” and “financial adviser”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Disputed Domain Names <lplfinance.com> and <lplfinancialadviser.com> are nearly identical, or if not identical, are confusingly similar to the Complainant’s LPL Mark. The words “finance” and “financial adviser” in the Disputed Domain Names are descriptive and indicate that the website provides information about financial advisement and financial services. Potential consumers encountering the Disputed Domain Names would likely expect that the words “finance” and “financial adviser” describe the services offered by the Complainant under its LPL Marks.

It is well established that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant’s trademark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word “shop” was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks). This is especially true where, as in the present case, the descriptive or generic words are associated with the Complainant and its services. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Further, the Disputed Domain Names are confusingly similar to the Complainant’s registered LPL Marks because they contain the mark in its entirety. A domain name is “nearly identical or confusingly similar to a complainant’s mark when it fully incorporate[s] said mark.” See PepsiCo. Inc. v. PEPSI SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (holding <pepsiadventure.net>, <pepsitennis.com> and others are confusingly similar to complainant’s PEPSI mark since they incorporated the trademark in its entirety).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to a complainant’s mark, and that the complainant has made a prima facie case of lack of rights or legitimate interests, the burden shifts to the respondent to establish some rights or legitimate interests in respect of the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 2.0, paragraph 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondents have not submitted any arguments or evidence to rebut the Complainant’s prima facie case. There is no evidence in the record that the Respondents have any authority, license or permission to use the LPL Marks, or that the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondents are improperly using the Disputed Domain Names to disrupt the Complainant’s business and for commercial gain.

Furthermore, by not submitting a response, the Respondents have failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that they hold rights or legitimate interests in the Disputed Domain Names. See Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323. See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (the respondent’s default is further evidence to conclude that it had no rights or legitimate interests in the domain name).

In addition, the Respondents’ registration and use of the Disputed Domain Names to create websites that offer finance-related advisory services, the same business activities of the Complainant, while prominently displaying the Complainant’s LPL Marks without authorization, is not a bona fide offering of goods or services. See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (holding that it would be unconscionable to find a bona fide offering of services when a respondent operates a website using a domain name which is confusingly similar to the complainant’s mark and for the same business.); Blue Cross and Blue Shield Association v. John Kraus, d/b/a MrINTER.NET, WIPO Case No. D2004-0756 (“Prior decisions under the Policy leave little doubt that a registrant cannot have a right or a legitimate interest in using a domain name that is confusingly similar to registered trademarks or service marks in order to compete with the marks’ owner”) (citing cases).

Finally, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) Circumstances indicating that the 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 the Respondent has engaged in a pattern of such conduct; or

(iii) Circumstances indicating that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) Circumstances indicating that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product on the Respondent’s website or location.

Policy, paragraph 4(b).

The Panel finds that based on the record, and for the reasons set forth below, the Complainant has demonstrated the existence of the Respondents’ bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(b) of the Policy.

First, a finding of bad faith may be made where a respondent knew or should have known of the registration and use of a trademark prior to registering a domain name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case with the Respondents’ registration of the Disputed Domain Names long after the Complainant began using and registering its LPL Marks. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).

Second, it is reasonable to infer from the circumstances of this case that the Respondents registered the Disputed Domain Names to disrupt the Complainant’s business and to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s LPL Marks. Although the Disputed Domain Names do not currently resolve to active websites, it can also be inferred that the Respondents registered and used the Disputed Domain Names for the specific purpose of trading on the name and reputation of the Complainant and its LPL Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”). This conduct constitutes bad faith registration and use of the Disputed Domain Names under the Policy.

Third, the fact that the Disputed Domain Names consist of the Complainant’s well-known LPL Marks along with terms that are descriptive of the Complainant’s core services is a further indication that the Respondents were aware of the Complainant’s rights and that they deliberately registered and used the Disputed Domain Names in bad faith to profit from the Complainant's goodwill and reputation. There is simply no legitimate reason that could explain the Respondents' choice of the Disputed Domain Names other than to exploit the goodwill attached to the Complainant's LPL Marks. AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289 (bad faith use and registration found where respondent used confusingly similar domain name to sell competing products).

Fourth, the fact that registrant details provided by the Respondents appearing in the WhoIs records for the Disputed Domain Names appear to be false is an additional indication of the Respondents’ bad faith. The Complainant submitted evidence showing that the address appearing in the WhoIs record for the Disputed Domain Name <lplfinance.com> corresponds to the address of a legitimate bank in Pittsburgh that is not connected to the Respondents. Furthermore, there is no state in the United States abbreviated as “BX” or “KN”, which is listed in the WhoIs records for the Disputed Domain Names. In addition, the telephone numbers listed in the WhoIs records are incorrect. Prior panels have held that “use of false contact information in the Respondent’s initial registration application is evidence that the Respondent registered the domain name in bad faith”. See The Prudential Assurance Company Limited v. Osaro Godwin, WIPO Case No. D2005-0934.

Finally, Respondents’ bad faith can also be inferred from their lack of reply to the cease and desist letter sent by Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Names <lplfinance.com> and <lplfinancialadviser.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: March 5, 2014


1 The Panel notes that the websites at the Disputed Domain Names were identical at one point in time.