Controversial legal services company is rebranding but doesn’t have the domain name.
Pre-Paid Legal Services is changing its name to LegalShield, but it has a big problem: it doesn’t own LegalShield.com.
Just a short time after filing an intent to use trademark application for “LegalShield” the company filed a UDRP complaint for LegalShield.com.
The respondent, represented by Ari Goldberger of Esqwire.com, won the case.
What’s interesting to me is that Pre-Paid Legal Services argued in the case:
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
Then why would you file an intent to use trademark application in 2011?
The domain was registered in 2001.
For some reason the panel didn’t consider reverse domain name hijacking despite Goldberger asking for it.
I hope Pre-Paid Legal has some pre-paid intellectual property legal counsel.
George Kirikos says
He successfully defended colorfx.com at WIPO recently too, and that one seemed to be perfect for RDNH too.
Gnanes says
They can settle with a .me or .co and buy the .com when they got money.
Meyer says
One might question using Legal Shield legal services considering how poorly they handled the UDRP.
Karen Bernstein says
Ever heard of a tm clearance search before filing for a tm or at a minimum type in the domain name and check the whois. I know this doesn’t sound professional, but duh.
Clobert Rine says
It seems to me that WIPO and the NAF just throw a token RDNH every now and then to a domain investor just to show they are not biased.
These panelists have to be getting some guidance or coaching on how to rule on reverse domain name hijackings because they overlook/ignore it so often it’s obvious to anyone paying attention that this is being done intentionally. They sure don’t ignore other components of the UDRP guidelines like they do this one.
Speculator says
Did anybody notice they own the typo legalsheild.com? Talk about Epic Fail!
Jason says
Seems like they own it since it goes to the home page for LegalShield! http://www.legalshield.com
Andrew Allemann says
@ Jason – I bet they paid a lot for it after losing the UDRP.
JD Carr says
@meyer. Yes, we do have good intellectual property attorneys in our network. Problem solved.