Johnson & Johnson Loses Again Case Against 17 Year Old Domain Johnsons.com

A World Intellectual Property Organization panel rejected Johnson & Johnson UDRP claim on the 17 year old domain name Johnsons.com .

This is the second time in ten years the company lost a UDRP against the domain name Johnsons.com .

According to whois records,the registrant,who was represented by Karen J. Bernstein,owns the domain name since November 12,2006.

Here are some relevant facts and findings bu the three member panel :

“The Panel finds that the Complainant has established rights in the JOHNSON’S mark for purposes of the Policy through its trademark registrations with the USPTO; see Janus Interantional Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttal presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption.) 

 The relevant part of the Domain Name is “johnsons”. The addition of the generic top-level “.com” is insufficient to distinguish the Domain Name from the Complainant’s mark. “

“The owner of the current named registrant– the Respondent – of the Domain Name, was closely related to the previous holder. 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. 

 However, in order to fulfill this third requirement, 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.”

“Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. 

 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 not a case of Reverse Domain Name Hijacking. “