LegalZoom.com, Inc. v Liam Smith, thetechmenders

WIPO Case No. D2025-0364

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LegalZoom.com, Inc. v. Liam Smith, thetechmenders

Case No. D2025-0364

1. The Parties

The Complainant is LegalZoom.com, Inc., United States of America (“United States”), represented by Bryan

Cave Leighton Paisner LLP, United States.

The Respondent is Liam Smith, thetechmenders, United States.

2. The Domain Name and Registrar

The disputed domain name <uslegalzoom.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 January 30, 2025. amended Complaint on February 3, 2025.

On January 30, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On the same day, 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, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on January 30, 2025, providing the registrant and contact information disclosed by the
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 February 4, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2025. The Respondent sent an email communication to the Center on February 5, 2025, expressing their willingness to settle. On February 6, 2025, the Complainant requested a suspension of the proceeding for settlement discussions. The proceeding was therefore suspended pursuant to the Complainant’s request. Upon the Complainant’s

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further request, the proceeding was reinstituted as of March 12, 2025. The new Response due date was appointment on April 14, 2025.

The Center appointed William F. Hamilton as the sole panelist in this matter on April 15, 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.

4. Factual Background

The Complainant is a tech company that provides businesses and consumers with legal advice and resources.

Since at least 2001, the Complainant has maintained an active presence on the Internet, including through its official website at “ where it offers an extensive suite of legal and business support services, such as intellectual property registration and protection, business entity formation and registration, online legal document services, attorney listings, electronic signature services, virtual mail services, tax and accounting services, registered agent services, and other general legal services and information for small

businesses and individual consumers.

The Complainant owns numerous United States registrations for the trademark LEGALZOOM, including but not limited to:

- United States Registration No. 3,210,861, registered on February 20, 2007;

- United States Registration No. 3,210,728, registered on February 20, 2007;

- United States Registration No. 3,211,009, registered on February 20, 2007.

The disputed domain name was registered on December 2, 2024, and it resolves to a website claiming to offer trademark registration and protection services amongst other legal services.

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.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s LEGALZOOM trademark (the “Mark”) because the disputed domain name incorporates the Mark in its entirety and only adds the geographical prefix “us”.

The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain
name, as the Complainant did not authorize the Respondent to register the disputed domain name or use the
Mark or the disputed domain name.

The Complainant asserts that the Respondent’s website is offering services that directly compete with the Complainant’s intellectual property registration and business entity formation services. The Complainant contends that the Respondent is using the confusingly similar disputed domain name in bad faith, attempting

to attract consumers to its competing commercial website.
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B. Respondent

The Respondent did not substantively reply to the Complainant’s contentions, however in its email dated February 5, 2025, indicated its willingness to resolve the matter amicably and stated “We want to clarify that our intentions were never to cause any confusion with LegalZoom.com, Inc. or infringe upon their well- established trademarks. We respect their reputation as a leader in legal services and regret any unintended association our domain may have caused. Upon receiving this complaint and after internal deliberation, we have made the decision to take down the domain <uslegalzoom.com> promptly”.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy to succeed:

(i) The disputed domain name 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 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.

The entirety of the Mark is reproduced and recognizable within the disputed domain name. The disputed
domain name is created by using the geographical abbreviation (“us”) as a prefix to the Mark. Accordingly,
the disputed domain name is confusingly similar to the Mark for the purposes of the Policy. WIPO Overview
3.0, sections 1.7 and 1.8. LegalZoom.com, Inc. v. Sharon Hershkowitz, balloon Saloon, WIPO Case No.

D2020-2927 (transferring <legalzoom.nyc>).

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.

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

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demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the
Policy or otherwise.

The nature of the disputed domain name consisting of the Complainant’s Mark with the geographical abbreviation (“us”) carries a risk of implied affiliation because the term “us” identifies the primary market in which the Complainant does business.

The disputed domain name resolved to a website featuring the Mark and offering services competitive with those of the Complainant. Under the circumstances of this case, the Respondent’s registration and use of the disputed domain name do not establish rights or legitimate interests. Costco Wholesale Membership

Inc., Costco Wholesale Corporation v. David Kim, WIPO Case No. D2008-1517 (registration and use of a complainant’s trademark to direct Internet traffic to a respondent’s website is not a bona fide offering of goods or services).

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) establishes circumstances that, if determined by the Panel to be present, shall serve as evidence of the registration and use of a domain name in bad faith.

Panels have held that using a confusingly similar domain name to lure Internet users to a website for generating traffic and sales of services or products for its own commercial benefit, which competes with the services and products of the Mark owner, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. LegalZoom.com, Inc. v. Sharon Hershkowitz, balloon Saloon, WIPO Case No. D2020-2927; LegalZoom.com, Inc. v. Doug Bernacchi, WIPO Case No. D2017-1172; Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 (registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.)

The Panel finds the third element of the Policy has been established.

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 <uslegalzoom.com> be transferred to the Complainant.

/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: April 29, 2025