Hims, Inc. v. Sharad Patel
Claim Number: FA1810001810653
Complainant is Hims, Inc. (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Sharad Patel (“Respondent”), represented by Patricia L. Cotton of Pillsbury Winthrop Shaw Pittman LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hims.com>, registered with 1&1 Internet SE.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Charles A. Kuechenmeister as Panelist, John Upchurch as Panelist, and Sandra J. Franklin as Panelist and Chair.
Complainant submitted a Complaint to the Forum electronically on October 5, 2018; the Forum received payment on October 5, 2018.
On October 8, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <hims.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on October 10, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 2, 2018.
On November 12, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist, John Upchurch as Panelist, and
Sandra J. Franklin as Panelist and Chair.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <hims.com> domain name is confusingly similar to Complainant’s HIMS mark, in which it has common law rights.
2. Respondent does not have any rights or legitimate interests in the <hims.com> domain name, which it currently uses for Google search purposes.
3. Respondent registered and used the <hims.com> domain name in bad faith, by renewing it after Respondent knew about Complainant’s rights, and by using it to compete with Complainant.
1. Complainant may have some common law rights in the HIMS mark.
2. Respondent has rights and legitimate interests in the <hims.com> domain name and has used it for over 20 years.
3. Respondent did not register the <hims.com> domain name in bad faith; Respondent registered and uses the domain name in the course of his business, and began its use before Complainant existed.
4. Complainant is abusing the UDRP in an effort to force the transfer of the <hims.com> domain name from Respondent to Complainant, when Complainant’s efforts to buy the domain name failed.
Complainant has common law rights in the HIMS mark dating back to November of 2017.
Respondent has rights in the <hims.com> domain name, which it has been using for over 20 years.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims that it holds common law rights in the HIMS mark. Complainant has a pending Trademark application with the U.S. Patent and Trademark Office. Policy ¶ 4(a)(i) does not require a complainant to have a trademark registration if it can demonstrate common law rights in a mark prior to a respondent’s domain name registration. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has secondary meaning, which it can prove through evidence of advertising expenditures, market presence, and related evidence. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims that it generated more than $1 million in sales in just its first week of operation, and generates tens of millions of dollars in annualized revenue. Complainant demonstrates that it sells its products online on its website at <forhims.com>, which enjoys significant web traffic each month. Complainant also shows that it actively advertises its HIMS brand and its related offerings in traditional and social media. Notably, Respondent does not dispute Complainant’s rights in the HIMS mark. The Panel therefore finds that Complainant has established common law rights in the HIMS mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hims.com> domain name is virtually identical to Complainant’s HIMS mark, but for the gTLD “.com.” The gTLD in a domain name is irrelevant under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds that Respondent’s <hims.com> domain name is identical to Complainant’s HIMS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent argues that it has rights and legitimate interests in the <hims.com> domain name, and registered the domain name because HIMS is an acronym for the descriptive phrase “health information management systems.” A respondent can establish rights and legitimate interests in a domain name where respondent capitalizes on the generic nature of a domain name, without intention to trade off the goodwill of a complainant’s mark. See Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”); see also Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in Kaleidoscopes). Respondent provides various exhibits to demonstrate the use of the term “HIMS” as a health-related acronym. Respondent provides historical screenshots of the webpage resolving from <hims.com>, showing that it contained health-related content at various times throughout Respondent’s ownership of the domain name, which began in 1997.
Respondent demonstrates that it has spent the majority of its professional life in the health information management field and has used the <hims.com> domain name for various related purposes. A respondent can have rights and legitimate interests in a domain name where the domain name’s use corresponds with the terms incorporated in the domain name. See Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Panel finds that Respondent has shown that it registered and uses the <hims.com> domain name for content related to “health information management systems” or “hims,” and generally for content in his own professional field, and therefore has made a bona fide offering under the domain name. The Panel notes that Respondent passively held the disputed domain name for a period of 2 years out of the 20 years, and finds that this is immaterial to Respondent’s rights in the domain name; Respondent is not required to make a continuous use of an otherwise legitimately held domain name.
The Panel thus finds that, although Complainant made a prima facie case that Respondent lacks rights and legitimate interests, Respondent successfully rebutted Complainant’s case with evidence that it has rights and legitimate interests in the <hims.com> domain name under Policy ¶ 4(a)(ii).
The Panel notes that, if Respondent’s registration of the <hims.com> domain name predates Complainant’s rights in the HIMS mark, Complainant generally cannot satisfy Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). Respondent registered and began using the <hims.com> domain name in March 1997, more than 20 years before Complainant first used the HIMS mark.
The Panel has also concluded that Respondent has rights and legitimate interests in the <hims.com> domain name pursuant to Policy ¶ 4(a)(ii), generally defeating a finding of domain name in bad faith under Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Respondent registered the <hims.com> domain name in March 1997 in good faith because HIMS is a well-known descriptive acronym in his field of business. A respondent who registers a domain name for its descriptive value can rebut an argument that it registered the domain name in bad faith. See Thru, LLC v. Okada, FA 849145 (Forum Dec. 28, 2006) (“Nor can it be said that Respondent is using the domain name in bad faith since, as noted above, the term “thru” is extremely common and Respondent has the right to use this common term in its business venture.”); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (“A respondent does not register or use a disputed domain name in bad faith if the terms of a complainant’s mark are of common usage and the respondent operates a business that could reasonably be marketed under the disputed domain name”). As noted, Respondent provides various exhibits to demonstrate the use of the term “HIMS” as a health-related acronym, including historical screenshots of the resolving webpage, showing health-related content throughout Respondent’s ownership of the disputed domain name.
Respondent contends that its renewal of the <hims.com> registration does not establish bad faith. When a respondent registers a domain name prior to a complainant establishing rights in a mark, Panels have overwhelmingly found that the respondent did not register a domain name in bad faith. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Arena Football League v. Armand F. Lange & Assocs., FA 128791 (Forum Dec. 26, 2002) (“[O]nce a Panel finds that a domain name was originally registered in good faith, any subsequent renewal [that] could qualify as having been done in bad faith is irrelevant: the relevant point of inquiry occurs at registration, not renewal of that registration.”). The Panel finds that Respondent’s registration of the <hims.com> domain name predates Complainant’s claimed rights in the HIMS mark by more than twenty years, and that its use of the domain name was legitimate both before and after renewal. Specifically, the Panel notes that Respondent is entitled to use the disputed domain name as he sees fit, regardless of the timing of discussions regarding Complainant’s desire to purchase the disputed domain name.
The Panel rejects Complainant’s argument that bad faith is shown by Respondent’s brief use of the disputed domain name to point to a competitor of Complainant; that use was brief and, although not obligated to do so, Respondent ceased the competing use when he realized it caused confusion.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent of its rights to the disputed domain name, and force the transfer of the <hims.com> domain name to Complainant because Respondent refused to sell. Respondent also claims that Complainant is not candid in its Complaint because it does not acknowledge the descriptive meaning of HIMS, its relevance to Respondent’s field of business, or Respondent’s prior uses of the disputed domain name. Complainant also does not provide an account of its many attempts to purchase the disputed domain name from Respondent. The Panel finds that, although these allegations may be true, Complainant had a colorable claim based on arguments of bad faith renewal of the disputed domain name, and therefore declines to find reverse hijacking. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hims.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister as Panelist
John Upchurch as Panelist
Sandra J. Franklin as Panelist and Chair
Dated: November 16, 2018
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