WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LPL Financial LLC v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Tyler Ashton
Case No. D2021-3617
1. The Parties
Complainant is LPL Financial LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Tyler Ashton, United States.
2. The Domain Name and Registrar
The disputed domain name <lpl-finance.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 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 Complainant on November 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 8, 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 Respondent of the Complaint, and the proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 13, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 12, 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
Complainant was founded in 1989 as the result of a merger. Complainant is one of the largest independent broker-dealers in the United States operating in the financial advice market. Complainant serves independent financial advisors and financial institutions by providing technology, research, clearing and compliance services, and practice management programs. Complaint, Annex 4.
Complainant’s shares have been traded on the NASDAQ beginning in 2010. Complainant currently provides an integrated platform of services to brokerage and investment services to more than 19,000 financial advisors and some 800 financial institutions who manage more than USD 1.1 trillion in advisor and brokerage assets. Complainant’s primary offices are in the United States, where it has over 4,800 employees. Complaint, Annex 4.
Complainant has registered and is using numerous domain names which include “lpl,” including <lpl.com>, <lpl.net>, <lpl-financial.com>, among many other such registrations. Complaint, Annex 5. Complainant has an online presence, including an official Facebook page which has over 18,000 likes. Complainant also has over 23,000 followers on Twitter. Complaint, Annex 6.
Complainant is the holder of numerous trademark registrations for LPL and LPL FINANCIAL. Its trademark registered with the United States Patent and Trademark Office (“USPTO”) for LPL was issued on October 26, 1993. Complainant also has USPTO trademarks for LPL FINANCIAL which were registered as early as August 4, 2009. Complaint, Annex 7.
On September 6, 2021, Complainant received a report for a user that the disputed domain name was being used for fraudulent services. Complaint, Annex 9.
The disputed domain name was registered on January 26, 2021. Complaint, Annex 1. The disputed domain name resolves to a website that represents that it provides financial advice. Complaint, Annex 8. Language on the "About Us" page of the Respondent's website has been listed on a "scam alert" website as generic language used on fraudulent websites. Screen captures of the website reporting scams related to the language present on the Respondent's website are provided in the Complaint. Complaint, Annex 10.
5. Parties’ Contentions
Complainant asserts that the disputed domain is confusingly similar to its registered trademarks LPL and LPL FINANCIAL. Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s registered trademark LPL, a hyphen, and the English word, “finance.” Complainant is the owner of the word mark LPL, and the word plus design mark LPL FINANCIAL. The entirety of the word mark LPL and a dominant feature of the word plus design mark LPL FINANCIAL mark are recognizable in the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademarks.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0, section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to resolve to a website at which it purports to offer financial services and invites users to provide personal and/or financial information. Complainant received a report for a user that the disputed domain name was being used for fraudulent services. Moreover, language on the Respondent's website has been listed on a "scam alert" website as generic language used on fraudulent websites. Panels have previously determined that using a disputed domain name for illegitimate activity precludes a finding that the domain name has been registered and is being used in bad faith. See, e.g. A Medium Corporation v. Protection of Private Person, REG.RU Protection Service/Ivan Ivanov, WIPO Case No. D2018-2382. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <lpl-finance.com> be transferred to Complainant.
M. Scott Donahey
Date: January 20, 2022