A WIPO rejected Johnson & Johnson UDRP claim on the domain name Johnsons.com

The domain holder was represented by Karen J. Bernstein.

The domain name has been owned by the domain holder since November 12, 2006.

Not only did the three member panel not find Reverse Domain Name Hijacking but one panelist, Peter Rindforth dissented with this majority finding that the domain name was registered in bad faith, although he agreed with the majority that the domain name was not used in bad faith.

The panel did not even mention the fact that “Johnson” is the second most common surname in the US

The panel also did not cite Laches on a domain name that is now 17 years old.

Here are the relevant facts and findings by the three member panel:

The Complainant is Johnson & Johnson, a New Jersey company specialized in the field of personal care products, especially for babies and children since 1894. The Complainant owns numerous national and international trademark registrations worldwide, including JOHNSON’S. The JOHNSON’S mark has been registered since as early as August 27, 1912

The Domain Name has already been the issue of a UDRP proceeding, namely Johnson & Johnsons v. Tomato Pages Website Production Services, NAF Claim No. 162058. Both the Complainant and the Respondent have referred to the said case in their argumentation and asked the Panel to consider the previous case as part of the evidence and background for the Decision in the present dispute.

Further, the Respondent states that this proceeding is res judicataA “Re-filed Complaint” within the scope of the Policy, is where the same complainant files a complaint against the same respondent and regarding the same domain name as in a previously decided complaint. As discussed in several previous UDRP cases, (i.e. Grove Broadcasting Co. Ltd.v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc.v. Website In Development, WIPO Case No. D2000-1490; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527) re-filing may only be allowed in exceptional circumstances.

As stated by the panel in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490 “in determining the circumstances in which Refiled Complaints should be entertained under the Uniform Policy, a distinction should be drawn between (i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint.” For the first type, acceptance of Re-filed Complaints should be exceptional. “In relation to the second type… a different approach is warranted. With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint).”

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.

However, as both Parties have referred to the previous NAF case concerning <johnsons.com>, the Panel will consider the facts and circumstances described in that case in deciding the present dispute in the extent the Panel finds appropriate.

The Panel finds that the Domain Name must both be considered as registered and used in bad faith. The Panel however sees no substantial bad faith in this case.

Even if the Panel finds that there was some bad faith use between 2004 and 2006 this would be not enough for a transfer of the Domain Name <johnsons.com> to the Complainant, because the majority also finds that the registration was not in bad faith and all Panel members agree that there is no present bad faith use.

It is proved by the Complainant, and undisputed by the Respondent, that <johnsons.com> has been linked to a pay-per-click and pop-up advertising site with links to the Respondent’s goods by at least May 2011.

Normally, a respondent will be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content, for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.

In this case, the Respondent states that the Respondent had no initial knowledge of the automatic pay-per- click advertising links that was automatically added to the parking site using the Domain Name, but when being aware of this, the Respondent took actions to change the links in order not to refer to the Complainant’s trademark. Further, when discovering that the parking site had changed again, the Respondent states that in order to avoid the same thing happening again, decided to take down the website
The Panel finds no reason or the evidence to challenge the Respondent’s statement.

Although the specific time and date for the take-down is not clearly specified, the fact that the Domain Name is currently no longer in use is confirmed by the Complainant.

Considering the history of the Domain Name, the relations between the Respondent and the previous holder, and the fact that the Respondent has shown some good faith attempt toward preventing and inclusion of advertising or links which profit from trading on the Complainant’s trademark, the Panel cannot come to any other conclusion than that substantial bad faith use is not proved by the Complainant.

The Panel agrees that the requirements for registration and use in bad faith are not given in this case.

On the issue of Reverse Domain Name Hijacking the panel found “there is no evidence of harassment from the Complainant, and the accusations and presumptions filed against the Respondent are well within the scope of what the Panel finds acceptable from a trademark owner who discovers a domain name that may infringe its trademark rights.”

“The Panel therefore states that this is a case of Reverse Domain Name Hijacking.

Panelist Peter Rindforth filed a Dissenting opinion stating:

I fully agree with the majority Panelists regarding the conclusion on Res Judicata Re-filed Complaint, namely that the Complaint cannot be regarded as a re-filing and that the Complaint is admissible.

I further fully agree that johnsons.com is confusingly similar to the Complainant’s trademark JOHNSON’S, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

I also agree that, in the light of what the Panel has found regarding Registration and Use in Bad Faith, there is not necessary for this panel to come to a decision on Rights or Legitimate interests.

However, I respectfully partly disagree with the Panel majority’s ground on Registration and Use in Bad Faith.

As stated above regarding Res Judicata / Re-filed Complaint, referring to the previous NAF case Johnson & Johnsons v. Tomato Pages Website Production Services, NAF Claim No. 162058, 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. Thus, the owner of the current named registrant – the Respondent – of the Domain Name was closely related to the previous holder.

At the time johnsons.com was transferred to, and registered in the name of the Respondent it is therefore obvious for me that the Respondent was well aware of the fact that the Domain Name was “confusingly similar” to the Complainant’s “registered and famous” trademark JOHNSON’S (see Johnson & Johnson v. Tomato Pages Website Production Services, NAF Claim No. 162058).

I therefore conclude that johnsons.com was registered by the Respondent in bad faith, based on the fact that the Respondent, at the time of registration of the Domain Name was at least on constructive notice of the Complainant’s registered trademark.

However, in order to fulfill this third requirement, the Domain Name must both be considered as registered and used in bad faith. Here, I fully agree with the Panel majority that bad faith use is not proved by the Complainant.

Finally, I agree with the Panel majority that this is not a case of Reverse Domain Name Hijacking.