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.