A timely Additional Submission was received from Complainant on September 13, 2011 A timely Additional Submission was received from Respondent on September 20, 2011 All submissions were considered by the Panel.On September 16, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Thilly Cabell and Sandra J. REGISTRAR AND DISPUTED DOMAIN NAMEThe domain name at issue is , registered with Moniker.
For Complainant to prevail, it must be able to prove that on the date the disputed domain was registered, Complainant had established secondary meaning in the marketplace such that consumers exclusively associated the tern “legalshield” with Complainant.
Respondent’s Contentions (continued)It is well-established under the Policy that the use and registration of descriptive term domain names is an extremely common and permissible business practice.
Respondent has a legitimate interest in the disputed domain and there is no evidence of bad faith registration or use.
Respondent registered the domain name in July 2001, because it incorporates a descriptive term composed of two common words in the English language.
Franklin Arbitrator as Panelists and Honorable Karl V. Complainant requests that the domain name be transferred from Respondent to Complainant. Complainant’s Contentions Complainant has used the LEGAL SHIELD mark since as early as 1999 in connection with its offering of legal service plans.
Since 1999, Complainant has sold legal service products under the LEGAL SHIELD mark to more than 800,000 people.There is no evidence that Respondent has made any legitimate use of the domain name in connection with a bona fide offering of goods and services.There is no evidence that Respondent is doing business as “legalshield” or “legalshield.com”.For a decade, Complainant took no issue with Respondent’s ownership and use of the disputed domain.This indicates that Complainant did not believe that Respondent acted in bad faith and raises the question of whether the Complainant should be barred pursuant to the doctrine of laches.Complainant’s Contentions (continued)Clicking on these links does not take the visitor to a legitimate page within a website but rather posts advertisements related to the legal market.Because some of these advertisements are for Complainant’s trademarked goods and services, including its LEGAL SHIELD offerings, visitors to the Respondent’s website are likely to mistakenly believe that Respondent is somehow affiliated with, or endorsed by, Complainant. Respondent’s Contentions Complainant has no right to the disputed domain. On August 16, 2011, Moniker confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Moniker and that Respondent is the current registrant of the name. Domain Administrator / Port Media Claim Number: FA1108001403090 Complainant is Pre-Paid Legal Services, Inc. The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. Franklin Arbitrator as Panelists and Honorable Karl V. Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 12, 2011.Respondent registered the disputed domain because it is comprised of a simple combination of two common and English words – “legal” and “shield.” Complainant is using the name in a purely descriptive sense, which undercuts its own claim to trademark protection.The domain name was registered after it expired, was deleted, and offered for registration again.