For the second time in ten years, consumer products company Johnson & Johnson has lost a UDRP against the domain name Johnsons.com.
I first wrote about this case back in July. As I noted at the time, the whois record changed slightly since the domain was registered in 1997, but it’s quite clear that the same group still owns the domain name.
Nevertheless, Johnson & Johnson used the fact that the registrant company name on whois changed as a way to argue that the registration date at issue in this dispute is 2006, when the registrant name last changed. J&J filed its first complaint in 2003.
In general, panels will not hear UDRP cases that were previously rejected. In this case, the three member panel ruled (pdf) that this does not qualify as “refiled case” because of the ownership change:
In this case, the Complainant and the Domain Name are the same as in the previous NAF Case. The Panel finds that the Domain Name has, since then, been transferred to a new holder within the same group of companies/owners as in the previous case. Further, the state of use of the Domain Name has changed. The Panel therefore concludes that the present dispute concerns a number of acts that have occurred subsequent to the decision of the original complaint and the present dispute shall be seen as a new action
under the Policy.In addition to that, the Panel notes that the preceding complaint was filed against a different Respondent. Therefore, under the circumstances, the Complaint cannot be regarded as a re-filing and the Complaint is admissible on this basis.
It’s interesting that the panel included a line about the “state of use” of the domain name changing, as that doesn’t seem relevant to the issue of whether the case should count as being refiled.
Even more curious, the panel sort of contradicts itself about the importance of the change in registrant when writing about registration in bad faith:
The majority of the Panel therefore agrees that the corporate entity which holds the current registration is in fact owned by the same personnel who made the original purchase in 1997. While a transfer of ownership in most cases would warrant a new review, the fact that the owners remain the same simply does not support an inference in this case that the absence of bad faith at the time of the original registration, which the Panel accepts on the basis of the evidence has changed.
So it wasn’t a refiled case because the owner changed, but the panel considered that the owner didn’t really change when it considered registration in bad faith.
It’s confusing, but the panel got the overall decision correct. It sided with the domain registrant. It did not, however, find Johnson & Johnson guilty of reverse domain name hijacking.
Even more confusing is panelist Petter Rindforth’s dissent, where he states that the the domain was registered by the respondent in bad faith, but not used in bad faith. He seems to imply it was registered in bad faith because the registrant new about Johnson & Johnson’s mark, but never used it in bad faith.
Perhaps it’s time the company accept the fact that it has no legal right to the domain name and offer to buy it.
Karen J. Bernstein represented the domain name owner. Drinkler Biddle & Reath LLP represented Johnson & Jonson.
Jason Davis says
Why don’t they just make an offer that cannot be refused. Seems like the easiest way to get this domain name. I would think they have the cash to do so.
Tom says
Good recommendations regarding “why don’t they just make an offer that cannot be refused”…. well the reason they cannot do this is for the following:
1) Establishing/Creating Precedence that they have rights to the term “Johnsons”.
2) If they were able to succeed at (1), then they would use that to go after other domains with the term “Johnsons” in it.
3) Attorneys want to bill for time in back and forth battles
4) Attorneys consider it a lottery ticket for potential litigation if the decision is made for or against their client, then they can have more BILLING OPPORTUNITIES for their time at $750/hour or maybe $500/hr
5) other unmentionable reasons.
Andrew Allemann says
I don’t think #1 & #2 apply in this case because they already lost two UDRPs and the circumstances around this domain are very different. Also, the domain is very different from something like JohnsonsBaby.com.
Mike says
CNN Breaking News: http://www.cnn.com/2013/11/04/health/johnson-and-johnson-settlement/index.html
ivorytrader says
i have used johnson & johnson products and they all suck. i think they use inferior ingredients on purpose so they can tell you that the pain and burning is a cleansing process.
John Berryhill says
The “dissent” is mislabeled, and should be indicated as a concurrence.
Karen Bernstein knocked a difficult pitch right out of the park. Many panelists will not accept a defense relying on corrective measures post-notification.
On the point of the relationship between the prior registrant and the current registrant, it is my understanding that the circumstances involved the passing away of the principal of the prior registrant, so the panel may have been less inclined to consider disposition of a decedent’s estate to be a “transfer in bad faith”. But the Panel seems to exercise some sensitivity by not going into detail on the manner in which the registrants were “closely related”.
Karen Bernstein says
Yes, my client’s brother died after the 2003 decision and they did almost everything together, including running a web design business. They were very close!