Placeholder canvas

Back to All Cases

national arbitration forum


Pre-Paid Legal Services, Inc. v. Domain Administrator / PortMedia

Claim Number: FA1108001403090



Complainant is Pre-Paid Legal Services, Inc. (“Complainant”), represented by David M. Sullivan of Crow & Dunlevy, P.C., Oklahoma, USA.  Respondent is Domain Administrator / PortMedia (“Respondent”), represented by Ari Goldberger of Law Firm, New Jersey, USA.



The domain name at issue is <>, registered with Moniker.



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.


Diane Thilly Cabell and Sandra J. Franklin Arbitrator as Panelists and Honorable Karl V. Fink (Ret.) as Chair.



Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 12, 2011.


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.  Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On August 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to  Also on August 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.


A timely Response was received and determined to be complete on September 9, 2011.


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. Franklin Arbitrator as Panelists and Honorable Karl V. Fink (Ret.) as Chair.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. 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.

The <> domain name is identical to the Complainant’s LEGAL SHIELD mark.

Respondent has no legitimate interests in respect of the disputed domain name.  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 “”.

Respondent is not making a legitimate noncommercial or fair use of the domain name.  The website hosted at <> includes visual themes and terms of art that are likely to be confused with Complainant’s LEGAL SHIELD product.


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.


B. Respondent’s Contentions

Complainant has no right to the disputed domain.  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.  Respondent registered the disputed domain without any knowledge of Complainant’s alleged trademark.  Complainant filed for its trademark registration just seven days prior to the filing of the instant Complaint.

Without a registered trademark, Complainant’s claim rests on establishing an alleged common law trademark for a pairing of two common and extensively used descriptive English words.  Complainant has failed to provide and cannot provide the evidence required under the Policy.  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.  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.

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.  Respondent had no knowledge of Complainant, its website, its business or trademark when it registered the domain name ten years ago.

Respondent has consistently used the disputed domain in good faith.  Since the date it was registered, the disputed domain was hosted with a service which places pay-per-click (“PPC”) advertising on a Yahoo! advertiser feed on hosted domain names, and shares the advertising revenue with the domain name owners.  Respondent has used the domain name to display PPC links related to general interest topics related to the common meaning of the words “legal” and “shield.”


Respondent’s Contentions (continued)

There is substantial third-party use of the term “legalshield.”  An advanced Google search for “legal shield,” excluding “prepaid” and “legalshieldplus” to avoid reference to Complainant, yielded 126,000,000 results with the first two pages including the term “legalshield” in domains such as “” and “freelegalshield” and news reports and government statements regarding a “legal shield on mortgages” and a “legal shield” for the CIA and Gun Owners. This common use of the term supports a finding that Respondent registered the disputed domain without the intent to target Complainant or its alleged trademark.

Complainant has no registered trademarks and Complaint’s attempt to register a trademark contemporaneous to the filing of its Complaint provides no enforceable rights under the Policy.


The term “legalshield” is descriptive because in its plain dictionary meaning it refers to a “legal shield,” “legal protection,” or “immunity from prosecution.”

The registration of domain names that contain common words and terms are permissible on a first-come, first served basis, and such registration establishes the respondent’s legitimate interest, provided the domain was not registered with a trademark in mind.

There is no evidence supporting an inference that Respondent registered any domain name based on the fact that it incorporates a trademark.  Nor is there evidence supporting an inference that Respondent registered the disputed domain with Complainant’s trademark in mind.


Respondent’s Contentions (continued)

PPC links establish legitimacy where they are selected as a result of the generic or descriptive meaning of the terms contained in a domain name as opposed to being selected with a trademark in mind.

Complainant had proffered no evidence demonstrating that Respondent targeted its trademark, and all the evidence demonstrates that there was no such targeting.

Complaint’s assertion that the website has links associated with Complainant’s business is incorrect.

Respondent, through Yahoo, is simply presenting search results related to the common meaning of “legalshield.”  This is a permitted and proper use of the domain. 

Because Complainant has brought forth this case with no basis, and which it knows has no basis, the Panel should find that Complainant has abused the proceeding and, accordingly, issue a decision finding that Complainant has engaged in reverse domain name hijacking.


C. Additional Submissions

Complainant’s Additional Submission

Respondent has a history of registering domain names that fully incorporate the trademarks of others.  This pattern of conduct by respondent clearly demonstrates a bad faith intent to profit from domain names to which it has no legitimate rights.

Descriptive marks require a showing of secondary meaning, and the LEGAL SHIELD mark is not descriptive.  Complainant’s LEGAL


Complainant’s Additional Submission (continued)

SHIELD mark is suggestive of the legal plans and services it has been used in connection with over the past 12 years.

A compound word mark is suggestive if either of the words in the mark does not describe a constituent part of the underlying goods or services.

Because LEGAL SHIELD is suggestive, it is therefore inherently distinctive and does not require any showing that it has acquired distinctiveness.

Two common words can be combined to create a suggestive, inherently distinctive mark and thereby demonstrate the meritless nature of Respondent’s argument.

Based on the disclosures Respondent makes in its Response, it is clear that there is an additional reason to find that Respondent registered <> in bad faith.  Respondent has established a pattern of registering domain names that incorporate the trademarks of others.  Respondent has disclosed that it owns 12 additional domain names, at least 25% of which consist solely of the trademark of third parties (e.g.,, and  The WHOIS information on the <> and <> domain names show that Respondent registered these domains several years after the related federal trademarks were registered.

The registration of multiple infringing domain names containing another’s mark exemplifies bad faith.


Complainant’s Additional Submission (continued)

The parties agree that Respondent’s only use of the <> domain name has been to offer pay-per-click advertising but disagree on whether the pay-per-click advertising is a legitimate bona fide offering of goods and services.  The majority of panels have held that pay-per-click advertising is not a bona fide offering of goods and services.

Where a registrant uses pay-per-click advertising in connection with a domain name that consists of a suggestive trademark, that use is neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use.  Because the <> domain name consists solely of the suggestive mark LEGAL SHIELD and not a generic term, Respondent’s use of pay-per-click advertising is not a legitimate or bona fide offering of goods and services.

The panel, like the majority of other panels, should refuse to consider laches as a proper defense in this case.

Respondent’s allegation that Complainant’s filing of the Complaint constitutes reverse domain name hijacking is frivolous.


Respondent’s Additional Submission

Complaint issued a press release September 10, 2011, announcing it was changing its name from Prepaid Legal to Legal Shield and filed a trademark application for the term just 7 days before it filed the Complaint.

After 10 years of inaction, Complainant should not be able to wrest the disputed domain from Respondent.


Respondent’s Additional Submission (continued)

Complainant failed to provide any evidence that it had widely used the alleged trademark before 2001 or that it had become a distinctive identifier such that consumers identified Complainant by the term in 2001.

At least two other companies currently use the “legal shield” name in their domain names:  <> and <>.  Thus, after 10 years, Complainant is not exclusively associated with the common English term.  Complainant’s actions demonstrate a deceptive pattern of activity intended to wrench the disputed domain from Respondent’s legitimate ownership rights under the Policy.

Registration of other domain names should not be relevant to this Panel’s decision.  Each complaint under the Policy must be taken on its own merits and founded on its own evidence.

If the Panel were to find that Complainant had common law trademark rights as of July 2001, there is no basis to infer that Respondent was aware of Complainant or that it did anything improper over the past 10 years.



For the reasons set forth below, the Panel finds Complainant has not proven it is entitled to relief.



Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar

For Complainant to prevail, it must prove all three elements.  Because of the Panel’s ruling on the issue of Registration and Use in Bad Faith, the Panel makes no ruling on this issue.


Rights or Legitimate Interests

For Complainant to prevail, it must prove all three elements.  Because of the Panel’s ruling on the issue of Registration and Use in Bad Faith, the Panel makes no ruling on this issue.


Registration and Use in Bad Faith

No evidence was presented to show that Respondent was or could have been aware of Complainant’s mark when Respondent registered the domain name.

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).


Respondent asserts that it registered the disputed domain name in July 2001 because it incorporates a descriptive term composed of two common words in the English language. Respondent contends that it had no knowledge of Complainant or Complainant’s alleged rights in the mark, and there is no evidence in the record supporting a finding that Respondent should have known about Complainant’s existence. Respondent alleges that it has a pattern of registering domain names comprised of similar descriptive and common words and does not target trademarks with its domain name registrations. As evidence, Respondent offers the following domain names it has registered that are also comprised of common terms relating to themes and content similar to the disputed domain name: <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, and <>. In addition, Respondent asserts that it has consistently used the disputed domain name in good faith to host pay-per-click links, generated by Yahoo! and relating to the common meanings of the words comprising the disputed domain name, which is regarded as a bona fide business activity. Respondent denies any malicious intent to target Complainant and did not register the disputed domain name with the intent to sell it to Complainant, to prevent Complainant from adequately reflecting its mark, to disrupt Complainant’s business or to confuse consumers seeking Complainant. There is no evidence that Respondent registered the <> domain name in bad faith, and the Panel finds that Respondent has shown no bad faith in its registration of the <> domain name for the purposes of Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v., Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (“Complainant must do more than just show pay-per-click use to establish bad faith… pay-per-click websites are not in and of themselves unlawful or illegitimate”).


Respondent contends that the <> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s LEGAL SHIELD mark. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent may register a domain name consisting of common terms and the domain name currently in dispute contains such common terms.  Therefore the Panel finds that Respondent did not register or use the <> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).



Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.


Accordingly, it is Ordered that the <> domain name REMAIN WITH Respondent.


Honorable Karl V. Fink (Ret.) as Chair

Diane Thilly Cabell, Panelist

Sandra J. Franklin Arbitrator, Panelist

September 26, 2011

Source: World Intellectual Property Organization (WIPO) and National Arbitration Forums (NAF)


Since 1996, our attorneys have hundreds of dispute victories and have helped establish internationally-recognized legal precedent.

Contact Us

© 2024 ESQwire. All rights reserved. | Privacy Policy | Attorney Advertising Website design by ONE400