ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Los Angeles Legal Advocates, APC v. Yorfran Torres Case No. D2025-1282 1. The Parties The Complainant is Los Angeles Legal Advocates, APC, United States of America (“United States”), represented by Trestle Law, APC, United States. The Respondent is Yorfran Torres, Colombia. 2. The Domain Name and Registrar The disputed domain name is registered with INWX GmbH & Co. KG (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2025. On March 31, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2025, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email to the Complainant on April 14, 2025, 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 amendment to the Complaint on April 17, 2025. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2025.
page 2 The Center appointed Tobias Malte Müller as the sole panelist in this matter on May 20, 2025. 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. On June 3, 2025, the Panel issued its Administrative Panel Procedural Order No. 1. inviting the Complainant to comment on the United States Registration No. 7535046 (LALA LOS ANGELES LEGAL ADVOCATES), registered on the Principal Register, as well as to provide evidence of secondary meaning for the Registration No. 7497568 (LOS ANGELES LEGAL ADVOCATES), by June 8, 2025. The Respondent was given the opportunity to respond to the Complainant’s submission until June 13, 2025. The Decision due date was extended until June 18, 2025. On June 7, 2025, the Complainant filed its response to the above Procedural Order No. 1. The Respondent did not respond to the Complainant’s submission. 4. Factual Background It results from the Complainant’s documented and undisputed allegations that it is a law firm established in Los Angeles. It has been incorporated under the business name Los Angeles Legal Advocates, APC, with the California Secretary of State in 2020 and provides its legal services in the field of immigration and personal injury law since at least January 6, 2020. The Complainant is the registered owner of the following United States of America trademarks: (1) LALA LOS ANGELES LEGAL ADVOCATES (figurative) registered in the Principal Register on October 15, 2024, under Registration No. 7535046, with first use in commerce of January 6, 2020; (2) LOS ANGELES LEGAL ADVOCATES (verbal) registered in the Supplemental Register on September 3, 2024, under Registration No. 7497568, with first use in commerce of January 6, 2020. In its response to the Panel’s Procedural Order No. 1 of June 7, 2025, the Complainant requested the Panel to consider trademark Registration No. 7535046 alongside the trademark Registration No. 7497568. According to the WhoIs-record, the disputed domain name has been created on June 1, 2024. The disputed domain name resolves to a commercial Host-website. Furthermore, it results from the undisputed evidence before the Panel, that the disputed domain name was, however, used to create an email address associated with the disputed domain name. This email is being promoted on a fraudulent social media page impersonating the Complainant’s identity (by setting hyperlinks to the Complainant’s official website and Instagram profile) and promoting alleged legal services in immigration law under the Complainant’s business name. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: (1) The disputed domain name fully incorporates, and is identical to, the Complainant’s registered trademark creating a high risk of confusion among consumers who may mistakenly believe that the domain is associated with or endorsed by the Complainant;
page 3 (2) The disputed domain name is not being used to provide any legitimate goods or services. In particular, the Complainant has never transferred, assigned, or granted any rights to the Respondent to use its trademark. Furthermore, the disputed domain name is being used to create deceptive email addresses for fraudulent activity. The Respondent configured the disputed domain name as part of a fraudulent scheme to create the false impression that emails sent under the disputed domain name were sent by the Complainant and thereby unlawfully extract money from unsuspecting third parties believing the Respondent to be the Complainant. (3) The Respondent has not established a website at the disputed domain name and has demonstrated no legitimate business purpose for its ownership, instead using it solely for deceptive email communications intended to defraud consumers. In fact, the disputed domain name was used to create the email address listed on this fraudulent page. In the Complainant’s view this is a clear case of bad faith use because it is intended to deceive recipients and cause financial harm. Finally, the Respondent has also deliberately hidden its identity using WhoIs privacy services, further indicating bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 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 name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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.), namely: (1) LALA LOS ANGELES LEGAL ADVOCATES (figurative) registered in the Principal Register on October 15, 2024 under Registration No. 7535046, with first use in commerce of January 6, 2020; (2) LOS ANGELES LEGAL ADVOCATES (verbal) registered in the Supplemental Register on September 3, 2024 under Registration No. 7497568, with first use in commerce of January 6, 2020. The verbal elements of Registration No. 7535046, on which the Complainant relies – i.e., LOS ANGELES LEGAL ADVOCATES – are entirely reproduced in the disputed domain name, except for the initial element “LALA”. The Panel observes that Registration No. 7535046 consists of the words “LALA LOS ANGELES LEGAL ADVOCATES” presented in stylized text. However, for the purpose of assessing identity or confusing similarity, the Panel’s analysis focuses solely on the textual components of the mark, as stylized or figurative elements cannot be reflected in domain names. Accordingly, the Panel disregards the stylization of the mark’s text when evaluating the first element. WIPO Overview 3.0, section 1.10.
page 4 Finally, the Panel notes that Registration No. 7535046 was granted on October 15, 2024, which is after the Respondent registered the disputed domain name on June 1, 2024. While the UDRP does not specify that trademark rights must predate the domain name registration, it does require that such rights exist at the time the complaint is filed – which is the case here. Moreover, the fact that a domain name was registered before the complainant acquired trademark rights does not, on its own, bar the complainant from bringing a UDRP action or prevent a panel from finding identity or confusing similarity under the first element. WIPO Overview 3.0, section 1.1.3. Overall, the Panel therefore finds the mark is recognizable within the disputed domain name. However, the Panel notes that Registration No. 7535046 has disclaimed the language “LOS ANGELES LEGAL ADVOCATES”. WIPO Overview 3.0, section 1.10. Accordingly, further analysis is appropriate. With respect to Registration No. 7497568 to which the disputed domain name is identical, the Panel notes that it is registered on the USPTO Supplemental Register. Prior panels have recognized that complainants relying on registrations listed solely on the Supplemental Register are required to demonstrate secondary meaning to establish trademark rights under the Policy. This is because, under U.S. law, a supplemental registration alone does not constitute evidence of distinctiveness. WIPO Overview 3.0, section 1.2.2. Accordingly, the Panel considers it necessary to assess whether the evidence submitted by the Complainant in reply to the Procedural Order No. 1 is sufficient to establish that the Complainant’s trademarks have acquired a relevant degree of secondary meaning. WIPO Overview 3.0, section 1.3. The Complainant provided evidence of the secondary meaning of its trademarks through submission of press articles, testimonials and review sites, and marketing expenditures, views, and reach. Moreover, the fraudulent impersonation of the Complainant by the Respondent supports the source-identifying nature of the Complainant’s trademarks and shows an intent to take advantage of the rights of the Complainant. In these circumstances, the Panel finds that the Complainant has established unregistered trademark rights for the purposes of the Policy. 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. 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. The Panel notes that the disputed domain name resolves to a commercial Host-website and that it was used to create an email address. This email is being promoted on a social media page impersonating the Complainant’s identity (by setting hyperlinks to the Complainant’s official website and Instagram profile) and promoting alleged legal services in immigration law under the Complainant’s name. In addition, the disputed domain name fully contains one of the Complainant’s trademarks, i.e., LOS ANGELES LEGAL ADVOCATES, which is also the distinctive part of the Complainant’s company name. As a result, this Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s company name and trademark by registering a domain name consisting of
page 5 said trademark. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy. In particular, the disputed domain name is being used for a commercial Host-website, so that a noncommercial use thereof is excluded from the outset. In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. As outlined above, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of its trademark for registering the disputed domain name, which is confusingly similar. Finally, the Panel notes that there is no evidence in the record that could lead to the conclusion that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. 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 name. 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 name such as those enumerated in the Policy or otherwise. The Panel 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the Respondent uses the disputed domain name to resolve to a commercial Host-website. Furthermore, it results from the undisputed evidence before the Panel, that the disputed domain name was used to create an email address. This email is being promoted on a fraudulent social media page impersonating the Complainant’s identity (by setting hyperlinks to the Complainant’s official website and Instagram profile) and promoting alleged legal services in immigration law under the Complainant’s business name. For the Panel, it is therefore evident that the Respondent positively knew the Complainant, its business, and trademarks. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks when it registered the disputed domain name. Registration of a domain name, which contains a third party’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see, e.g., British American Tobacco (Brands) Limited v. Privacy service provided by Withheld for Privacy ehf / Isreal S Conteh, B Australia, WIPO Case No. D2022-3140 with further references). The finding of bad faith registration and use is supported by the following circumstances resulting from the case file: (i) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of the disputed domain name; (ii) the Respondent’s failure to respond to the Complainant’s assertions or to the administrative panel’s procedural order;
page 6 (iii) the implausibility of any good faith use to which the Respondent may put the disputed domain name; (iv) the Respondent using a privacy service to hide its identity; and (v) the undisputed fact that the Complainant has been using both of its trademarks continuously in commerce since January 6, 2020, and, therefore, several years prior to the Respondent’s registration of the disputed domain name. 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 name be transferred to the Complainant. /Tobias Malte Müller/ Tobias Malte Müller Sole Panelist Date: June 18, 2025
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