DECISION

 

ARAG North America Incorporated v. Huanzhi Li

Claim Number: FA2404002093082

 

PARTIES

Complainant is ARAG North America Incorporated ("Complainant"), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Huanzhi Li, ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <legalnowai.com>, registered with Cloudflare, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Lars Karnøe as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 14, 2024; Forum received payment on April 14, 2024.

 

On April 16, 2024, Cloudflare, Inc. confirmed by e-mail to Forum that the <legalnowai.com> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, Inc. 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 April 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2024 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 postmaster@legalnowai.com. Also on April 17, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 6, 2024.

 

On May 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lars Karnøe as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a company that provides legal services for individuals, companies, and employers, including legal insurance. Complainant was founded more than 85 years ago on the principle that everyone should have affordable access to legal representation. After three generations, the company is still owned and operated by the founding family and has grown to offer legal protection for all of life's situations. Complainant currently operates in 19 countries with a nearly $2 billion worldwide base.

 

Complainant's goods and services include the well-known "LEGAL NOW" services which provide access to legal services in more than 70 common legal matters, including bankruptcy, civil matters, consumer protection, divorce, family law, landlord/tenant matters, real estate and home ownership, and wills and trusts. Complainant's "LEGAL NOW" services include access to legal documents to assist users in preparation of their legal matter.

 

Complainant has been using its federally registered "LEGAL NOW" trademark with legal services since at least as early as 2015.

 

The disputed domain name <LegalNowAI.com> is confusingly similar to Complaint's "LEGAL NOW" trademark as it fully incorporates Complainant's trademark and "AI" as implying that it is providing Complainant's legal services through artificial intelligence, thus implying that the owner is a member of and/or affiliated with Complainant. The presence of the top level domain (gTLD) extension ".com" is irrelevant in an analysis for Policy ¶4(a)(i). Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007).

 

Respondent lacks rights and legitimate interests in the disputed domain name. In this regard, Respondent is not commonly known by the disputed domain name or any portions thereof. In fact, Respondent's name is commonly known as and referred to as "TURING".

 

Further, Complainant has not licensed or otherwise permitted Respondent to use the disputed domain name, nor "LEGAL NOW", nor any other mark owned by Complainant. Moreover, Complainant has never authorized Respondent to register the disputed domain name <LegalNowAI.com>. Additionally, the WHOIS information for the disputed domain name indicates that Respondent is purposefully trying to hide its identity as the owner of this domain name.

 

Respondent is using the disputed domain name to entice people to its web site for the purpose of confusing people into believing Respondent is sponsored by, affiliated with, or otherwise associated with Complainant, and/or to entice people into purchasing its own legal product instead of Complainant's similar "LEGAL NOW" trademarked product.

 

Given the incorporation of Complainant's famous "LEGAL NOW" mark into the disputed domain name, consumers visiting the website to which it resolves, may presume they will be safely accessing Complainant's web site and legal products and services.

 

Complainant asserts that such use of the disputed domain name to attract users to a web site designed to infringe Complainant's trademarked "LEGAL NOW" services is evidence that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to UDRP Policy ¶ 4(a)(iii). See also, Dell Inc.vs. Wu Yu, FA 1983598 (Forum Mar. 7, 2022) (concluding that Respondent's intentional use of the disputed domain name in an attempt to attract, for commercial gain Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation, or endorsement of web locations to which the disputed name resolves, constituted use of the disputed domain name in bad faith).

 

Respondent registered and is using the disputed domain name in bad faith. In this regard, Respondent was aware of Complainant's mark because the disputed domain name consists of Complainant's "LEGAL NOW" registered and famous mark. Further, Respondent's use of the disputed domain name to forward visitors to a website that infringes Complainant's "LEGAL NOW" trademark constitutes bad faith use for the purposes of the Policy. Additionally, Respondent's bad faith use is evidenced by Respondent's use of a privacy service to register the disputed domain name gives rise to a conclusive determination of Respondent's bad faith.

 

In conclusion, Respondent's bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the disputed domain name; the disputed domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the disputed domain name in connection with a bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant's marks in a site accessible under the disputed domain name; and Respondent's domain name incorporates exactly Complainant's famous "LEGAL NOW" mark.

 

B. Respondent

Complainant's use of the term "LegalNow" is not prominent on their website and requires multiple navigational steps to locate, which diminishes its recognition as a standalone mark.

 

The Complainant operates under the service name "araglegal" (https://www.araglegal.com/), with its website logo and nearly all descriptive text centered around "ARAG". The ARAG official homepage features six sub-menus, yet the term "LegalNOW" is only visible upon selecting "For Individuals", followed by clicking "Purchase a legal plan now for an existing issue". The term "LegalNOW" is not visible through any other menu option, and it requires at least three clicks to reach the single instance where "LegalNOW" is displayed on the entire website. This indicates that "LegalNOW" is not a primary name used in the Complainant's business operations and may even have been added temporarily just for the purposes of this proceeding.

 

In contrast, the product operation under the disputed domain name (the "Product")'s use of "LegalNow" is prominent and distinct in its branding and product description. The website at the domain name owned by the Respondent, <legalnowai.com>, explicitly uses "LegalNow" as the Product name, featuring prominently in the Product logo and in multiple descriptions. The Complainant erroneously contends that the Product is commonly known as "Turing". In fact, "Turing" is merely a nickname used to describe the artificial intelligence utilized in the Product. "LegalNow" has consistently been the name of the Product. This is evidenced by the fact that the Product was launched on a famous review website called Product Hunt under the name "LegalNow".

 

The services provided by the Product involve the use of artificial intelligence software to assist users in self-help drafting or reviewing legal agreements. The Legal Disclaimer for the Product explicitly state that the services offered are not legal services but rather provide legal information and self-help only. In contrast, the Complainant's trademark and business operations pertain to legal services. These offerings are not of the same category and do not conflict.

 

It is noteworthy that the Complainant's trademark registration in the Supplemental Register states, "THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR." However, the Product name "LegalNow" features a distinctive design.

 

The domain name was registered based on the Product name used by Respondent in a bona fide offering of services and not to confuse or mislead consumers seeking 3 Complainant's services. There is no evidence to suggest that the Respondent has attempted to disrupt the business of the Complainant or to confuse the Complainant's customers intentionally.

 

In summary, there is no evidence of the Respondent's bad faith in using a domain name that is identical or confusingly similar to the Complainant's registered trademark.

The Respondent serves as a director and is actively involved in the operations of companies named LegalNow Limited and LegalNow Holding Limited. Both entities are legally registered and operate under the "LegalNow" name, establishing the Respondent's rights and legitimate interests in the domain name.

 

FINDINGS

The Complainant is the proprietor of LEGAL NOW, U.S. Trademark Registration No. 5455469, registered for "Legal services" on the US Supplemental Register.

 

Complainant has been using the "LEGAL NOW" trademark in commerce for legal services since April of 2015.

 

The Complainant has not filed evidence of any other trademark registrations of the trademark LEGAL NOW than the registration mentioned above on the US Supplemental Register in any country.

 

The Complainant has not filed evidence that the Complainant is the proprietor of the domain <LegalNow.com>, the domain is presently offered for sale at www.dealwon.com.

 

The Complainant has not filed evidence that the trademark LEGAL NOW is well-known or famous.

 

The domain name in dispute <LegalNowAI.com> was registered by Respondent on November 22, 2023.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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

Based on the evidence provided by the Complainant, described further under Findings above, this Panel finds that the mark LEGAL NOW holds a very little, if any, distinctive character. This Panel therefore finds that the disputed domain name <LegalNowAI.com> is not confusingly similar to a service mark in which the Complainant holds rights in the meaning of the Policy Paragraph 4(a)(i).

 

Rights or Legitimate Interests

As all three elements of the Policy Paragraph 4(a) must be evidenced by the Complainant and as this Panel finds that the Complainant has not evidenced that the Policy Paragraph 4(a)(i) is met This Panel will not specifically comment on the question of Rights or Legitimate Interest.

 

Registration and Use in Bad Faith

Even though all three elements of the Policy Paragraph 4(a) must be evidenced by the Complainant and this Panel already finds that the Complainant has not evidenced that the Policy Paragraph 4(a)(i) is met this Panel makes the following findings regarding registration and use in bad faith of the disputed domain name.

 

This Panel does not find that the Complainant has evidenced in any way that the disputed domain name has been registered in bad faith of the Complainant's mark LEGAL NOW. The terms LEGAL and NOW seems merely descriptive in relation to legal services.

 

The Complainant has not evidenced to hold any right in or to use the domain name <LegalNow.com>. The Complainant offers the Complainant's LEGAL NOW services on the domain <araglegal.com>. The Complainant has not evidenced any well-known or famous character of the Complainants mark LEGAL NOW. Given the presented evidence this Panel finds that use of the disputed domain name does not qualify as an attempt to attract, for commercial gain Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation, or endorsement of web locations to which the disputed name resolves, and that the use of the disputed domain name therefore does not constitute use of the disputed domain name in bad faith.   

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

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

 

 

 

Lars Karnøe, Panelist

Dated: May 27, 2024