LPL Financial LLC v 吴松 (Wu Song), 西安椰果信息技术有限公司

WIPO Case No. D2024-3019

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LPL Financial LLC v. 吴松 (Wu Song), 西安椰果信息技术有限公司
(xianyeguoxinxijishuyouxiangongsi)

Case No. D2024-3019

1. The Parties

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

Hogan Lovells (Paris) LLP, France.

The Respondent is 吴松 (Wu Song), 西安椰果信息技术有限公司 (xianyeguoxinxijishuyouxiangongsi), China.

2. The Domain Names and Registrar

The disputed domain names <lpla-financial-advisory.shop>, <lpla-financial-advisory.store>, and

<lpla-financial-advisory.work> are registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2024. On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2024, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2024 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 in English on August 2, 2024.

On July 30, 2024 the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain names is Chinese. On August 2, 2024, the Complainant confirmed its request that English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

page 2

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 in English and Chinese, and the proceedings commenced on August 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2024.

The Center appointed Tao Sun as the sole panelist in this matter on September 9, 2024. 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 was founded in 1989 through the merger of two brokerage firms – Linsco and Private dealer in the United States.

Since 2010, the Complainant has been publicly traded on the Nasdaq under “LPLA”. The Complainant has over 8,400 employees. In the first quarter of 2024, its gross profit reached over USD 1,066 million, with a net income of over USD 289 million. As such, the Complainant has acquired considerable goodwill and reputation in the LPL brand in the context of the financial-services sector.

The Complainant owns, among others, the following registered trademarks relating to the trademark LPL:

(i)        The United States registration No. 1801076 LPL in class 36, registered on October 26, 1993;

(ii)       The United States registration No. 3662425 LPL FINANCIAL and device in classes 36 and 42,

registered on August 4, 2009; and

(iii)      The Chinese registration No. 38031585, LPL FINANCIAL in class 36, registered on February 21,

2020.  

The Complainant registered the domain name <lpl.com> in 1994 and uses it as its main corporate website. It also registered many other domain names such as <lpl.net>, <lpl-financial.com>, <lplaccountview.com>, etc.

The disputed domain names were registered on May 22, 2024. According to the evidence submitted by the
Complainant, the disputed domain names are resolved to pay-per-click (“PPC”) advertising webpage
displaying sponsored links, that include keywords such as “Business Accounting Services”, “Management

Consulting”, “Financial Advisor”, and “Investment Advisors”.

The Respondent is reportedly a Chinese company.

The Complainant’s lawyers sent notices to the Respondent via the Registrar’s registrant contact forms on July 9, 2024, requiring, among others, transfer of the disputed domain names to the Complainant, but no response was received.

page 3

5. Parties’ Contentions

A. Complainant

The Complainant contend that each of the elements required under the Policy for a transfer of the disputed domain names has been met.

Notably, the Complainants contend that:

(i)        the disputed domain names comprise a variation of the Complainant’s LPL and LPL FINANCIAL

trademark, altered only by the addition of the letter “a” following LPL, and as such are confusingly similar to
the Complainant’s marks.

(ii)       The Respondent has no rights or legitimate interests in respect of the disputed domain names. The

Respondent has not received any licence or other authorization of any kind to make use of the Complainant’s trademarks in a domain name or otherwise. The Respondent is not commonly known by the disputed domain names and no prior use. Neither is the Respondent using the disputed domain names in connection with any bona fide offering of goods or services. The disputed domain names are resolved to parking pages displaying sponsored links to services that are in direct competition with those offered by the Complainant, which does not represent bona fide offering of goods or services.

(iii)      The disputed domain names were registered and are being used in bad faith. The Respondent’s

registration of three disputed domain names, each targeting the Complainant’s trademark, evidences a
pattern of bad faith abusive registration. The Respondent registered the disputed domain names in order to
create a misleading impression of association with the Complainant, and with a view to deriving click-through
revenue from Internet users that are misled to the webpages to which the disputed domain names resolve, in
bad faith. By using the disputed domain names, the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of the webpages to which the disputed

domain names resolve and the products and services advertised therein, in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Preliminary Issues: Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons, including the facts that:

(i)        The disputed domain names have been registered under the “.shop”, “.store”, and “.work” generic Top-

Level Domains (“gTLD”), composed of Latin script and include the English term “advisory”, from which the Complainant infers that the Respondent is familiar with the English language and will not suffer any unfair prejudice if English is adopted as the language of the proceedings;

(ii)       the disputed domain names resolve to parking pages displaying PPC links, the content of which are

entirely in English;

page 4

(iii)      the Complainant’s working language is English. It will cause substantial additional costs and

unwarranted delay to require the Complainant to translate the Complaint and supporting annexes into

Chinese.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters in this case, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English, considering the factors that:

(i) disregarding the gTLDs, the disputed domain names consist of Latin letters, and the contents of the

website at the disputed domain names are in English, indicating that the Respondent has a certain level of
understanding of English; and

(ii)       The Respondent did not make any comments on the language of the proceeding, and did not file any

Response.

6.3 Substantive Issues

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain names incorporate the Complainant’s LPL and LPL FINANCIAL trademarks in their entirety and therefore should be considered confusingly similar with the Complainant’s trademarks for purpose of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms “advisory” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Furthermore, the fact that the disputed domain names also contain an additional letter “a” immediately after LPL will not prevent the findings of the confusingly similar in that, as widely agreed by panels, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purpose of the Policy. WIPO Overview 3.0, section 1.9.

Therefore, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

page 5

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Respondent has not received any licence or other authorization of any kind to make use of the Complainant’s LPL and LPL FINANCIAL trademarks in a domain name or otherwise. Neither is its name corresponding with any of the disputed domain names. The disputed domain names are resolved to PPC advertising webpages advertising for services with the keywords such as “Business Accounting Services”, “Management Consulting”, “Financial Advisor”, and “Investment Advisors”, which are clearly in competition with the business of the Complainant. It has been well established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering goods where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

The Panel therefore finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Panels have consistently found that mere registration of a domain name that is confusingly similar trademarks, the facts that the Complainant is publicly traded on the Nasdaq under “LPLA” and the addition of other terms “advisory” in the disputed domain names creates an implied affiliation that their operators provide advisory services related to the Complainant, the Panel finds that the Respondent knew or should have known of the Complainant and registered the disputed domain names in bad faith.
(particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous
or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO

Moreover, the Respondent has resolved the inherently misleading disputed domain names to the PPC webpages containing the links for advertising of services such as “Business Accounting Services”, “Management Consulting”, “Financial Advisor”, and “Investment Advisors”, which are in direct competition with the Complainant. The Panel finds that the Respondent was aware of the Complainant and intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent’s failure to file any formal response also supports a finding of bad faith.

page 6

The Panel finds that the Complainant has established the third element 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 names <lpla-financial-advisory.shop>, <lpla-financial-advisory.store>, and <lpla-financial-advisory.work> be transferred to the Complainant.

/Tao Sun/
Tao Sun
Sole Panelist
Date: September 23, 2024