Has Rebranding Problem with Domain Name — Pre-Paid Legal

Controversial legal services firm 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 following filing an intent to use trademark application for “LegalShield” the firm 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.