| PPL Legal Care of Canada Corporation v. Curtis Patey, Resolution Canada Inc., Case No. 00056 - by Eric Macramalla
Domain Name: pre-paidlegalservicesinc.ca
OutCome: Transfer Granted
Response Filed: No
The Complainant was incorporated under the laws of Nova Scotia in 1999 and is a wholly owned subsidiary of Pre-Paid Legal Services Inc., an American company incorporated in 1976. The Complainant provides pre-paid legal services plans. Neither PPL nor PPSI own a registered trade mark in Canada. The Registrant, Curtis Patey, registered the disputed domain name on April 20, 2005. The Complainant provided evidence indicating allegations that A. Curtis Patey engaged in fraudulently selling pre-paid legal services.
The Registrant did not file a Response to the Complaint, and accordingly the Complainant elected as per Rule 6(5) of the CIRA Domain Name Dispute Resolution Rules to reduce the three member Panel to a single member.
Under the CIRA Domain Name Dispute Resolution Policy ("Policy"), a successful Complainant must establish that the disputed domain name is confusingly similar with a mark in which it had rights, that the name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.
On the issue of Confusion, the Panel held the Complainant had rights in the Mark because the Mark had been used in Canada by a licensor of the Complainant. Pre-Paid Legal Services, Inc. was the trade name of the U.S. incorporated parent company of PPL. However, because of the Complainant's use of the trade name Pre-Paid Legal Services, Inc. in various brochures, DVDs, and websites, the Panel held it to be a trade name used in Canada for the purpose of distinguishing services from those of others. Accordingly, the Panel held the disputed domain name to be confusingly similar to the Complainant's mark as it was virtually identical.
The Panel also concluded that enough evidence was put forth to find that the disputed domain name was registered in bad faith. In particular, the Complainant provided evidence that the domain name was being used as part of a scheme to deceive individuals into purchasing non-existent legal services plans.
Finally, the Panel held that the Registrant did not have any legitimate interest in the domain name as per paragraph 3.6 of the Policy
The Panel ordered the domain name pre-paidlegalservicesinc.ca transferred to the Complainant as per paragraph 4.3 of the Policy.