Lewis & Lin Defends Tucks.com from UDRP Filed by Johnson & Johnson
When one of the largest companies in the world files a UDRP, most would probably think the outcome would go in their favor, regardless of the descriptive nature of the domain name. Johnson and Johnson, one of the largest health and consumer goods companies in the world, filed a UDRP to try and wrest the Tucks.com domain name from its owner, Chad Wright of WebQuest.com, Inc.
Tucks is J&J’s brand of medicated ointment pads for hemorrhoids. J&J uses TucksBrand.com for its website.
The WIPO decision was just handed down, and the panel ruled in favor of WebQuest, who was represented by the Brooklyn-based law firm of Lewis & Lin. I asked Brett Lewis to comment on the decision and he said, “This is a great decision for legitimate domainers. The Panel thoughtfully evaluated the evidence, or lack thereof, and concluded that the Complainant had failed to demonstrate that the domain name, , which is a dictionary word, had been registered and used in bad faith.”
While the respondent conceded that J&J does have rights to the Tucks trademark, they argued five points in defense of the domain name. These points include that it’s a dictionary term, “Tuck” is a common last name, the name was owned for many years without incident, the owner had no intent to sell it to J&J, and upon a change of parking companies, Tucks-related ads showed accidentally until it was noticed by the owner and switched.
I want to share some of the panel’s findings, which I think are important for domain owners to note:
“The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark.“
“However, that domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as a dictionary word or descriptive term. “
“Although the Panel has some reservations about the overall credibility of Respondent’s Declaration, the Panel accepts Respondent’s sworn statement that he was not aware of the TUCKS mark at the time of registration. However, even allowing that the trademark was known to Respondent, the registration could have been in good faith and for a legitimate purpose if Respondent’s use of a common word was intended to be descriptive, as explained above.
The Panel takes into consideration that Respondent’s website did not refer to the TUCKS trademark or advertise complainant’s competitors for a full nine years after Respondent’s registration. The record also shows that the website, for at least a few years, used a dictionary meaning of the “tucks” term, before linking to Complainant’s competitors during a six-month period in 2011.“
“On balance, the Panel concludes that the Complaint provides insufficient evidence to conclude that the disputed domain name was registered in bad faith.”
There was quite a bit more to the decision than just what I posted, and you can download the full decision here (a Word document) since it has not been posted on the WIPO website yet.
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