LPL Financial LLC v Domain Admin, Privacy Protect, LLC

WIPO Case No. D2022-1482

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LPL Financial LLC v. Domain Admin, Privacy Protect, LLC
(PrivacyProtect.org) / Domain Admin, TotalDomain Privacy Ltd

Case No. D2022-1482

1. The Parties

The Complainant is LPL Financial LLC, United States of America (“United States”), represented by Hogan

Lovells (Paris) LLP, France.

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Domain

Admin, TotalDomain Privacy Ltd, Panama.

2. The Domain Name and Registrar

The disputed domain name <lplfinancialservices.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2022. On April 26, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2022 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 May 4, 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 May 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2022.

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The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on June 20, 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 active in the financial advice market and serves independent financial advisors and financial institutions, providing them with technology, research, clearing and compliance services.

The Complainant is the owner of the following trademark registrations:

- United States trademark registration No. 1801076 for LPL, registered on October 26, 1993 in class 36;
- United States trademark registration No. 3662425 for the LPL FINANCIAL & design, registered on

August 4, 2009 in classes 36 and 42.

Among other domain names, the Complainant has registered the domain names <lpl.com> in 1994 and

<lpl-financial.com> in 2004.

The disputed domain name was registered on August 19, 2016.

At the time of filing of the Complaint, the disputed domain name redirected users to a parking page with links directly related to the Complainant’s field of activity.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks. The addition of the term “services” in the disputed domain name does not change the overall impression of the designation as being connected to the Complaint’s trademarks.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Respondent is not affiliated nor authorized by the Complainant in any way; specifically no license nor

authorization has been granted to the Respondent to make any use of the Complainant’s trademarks, or apply for registration of the disputed domain name; (iii) the disputed domain name resolves to a parking page with links directly related to the Complainant’s field of activity, which confirms that the Respondent has
failed to use the disputed domain name for a bona fide offering of goods and services.

Finally, the Complainant contends that the Respondent has used and registered the disputed domain name in bad faith. According to the Complainant, the Respondent was aware of the existence of the Complainant and of its trademark when it registered the disputed domain name. The Complainant further asserts that the Respondent has used or is using the disputed domain name for the purpose of generating pay-per-click

(“PPC”) revenue from the diversion of Internet users, a behavior amounting to registration and use in bad

faith.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) 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) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name reproduces the Complainant’s trademarks LPL and LPL FINANCIAL in their
entirety with no alteration and combines these trademarks with the terms “financial services”, respectively

“services”.

UDRP panels consider that 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 of paragraph 4(a) of the Policy (see WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.8).

In the present case, the trademarks LPL and LPL FINANCIAL are clearly recognizable in the disputed domain name. The mere addition of the terms “financial services”, respectively “services” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.

Finally, UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, may be
disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see

WIPO Overview 3.0, section 1.11).

The Complainant has satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has failed to file a response.

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or
legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the

Respondent an authorization to use the disputed domain name.

There is no evidence on the record suggesting that the Respondent used or made demonstrable
preparations to use the disputed domain name in connection with any type of bona fide offering of goods or
services. Instead, the Respondent used the disputed domain name in connection with a website containing
pay-per-click (“PPC”) links to third-party websites. Applying UDRP paragraph 4(c), UDRP panels have found
that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide
offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark
or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). Accordingly, the Respondent’s
use of the disputed domain name does not constitute bona fide offering of goods and services.

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent’s silence leaves unrebutted the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

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Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered and used its LPL and LPL FINANCIAL trademarks. Given the distinctiveness of the Complainant’s trademarks, and also the presence, on the parking page connected to the disputed domain name, of several references to the Complainant’s field of activity (namely financial advisory services), the Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademarks. Consequently, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its trademarks at the time of the registration of the disputed domain name, such that the disputed domain name was registered in bad faith.

Furthermore, the Respondent has used the disputed domain name in connection with a website featuring sponsored links. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademarks, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO

Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings
Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International
Property Associates, WIPO Case No. D2008-1230).

For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

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 <lplfinancialservices.com> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: July 4, 2022