Legal News

Registrant Retains Hims.com Domain Name

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In October, I wrote about the UDRP filed against the Hims.com domain name. The UDRP was decided by a three member panel, and the domain registrant will be able to keep the domain name after the complaint was denied.

The primary reason the complaint was denied was because proving the domain name was registered in bad faith, which is necessary to prevail in a UDRP, was impossible. I mentioned that in the article I wrote about the UDRP filing, and the panel ruled in favor of the domain registrant because of that. Here’s the relevant discussion in the decision:

“Respondent contends that its renewal of the 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 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. “

Not surprisingly, the domain registrant asked the panel to consider a finding of Reverse Domain Name Hijacking (RDNH). It looks like the registrant asked for this because of the impossibility of registering the domain name in bad faith so many years prior to the complainant’s existence. The panel declined

GoDaddy / NameFind Wins Legally.com UDRP, But It’s Worth a Read

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When I first saw the Legally.com UDRP filing, I thought it would be a slam dunk for GoDaddy, which is the registrant of the domain name via its NameFind portfolio company. The Legally.com UDRP decision was published today, and although the registrant prevailed, it seemed a bit closer than I would have assumed. GoDaddy was represented in this proceeding by Gerald Levine of Levine Samuel, LLP.

Legally is a generic dictionary term, and it is also the name of at least a couple of companies that use non-.com domain extensions. The complainant in this filing is a company that was established in 2015, and it uses the Legally.CO domain name for its business. NameFind reportedly acquired the Legally.com domain name in 2017 when it acquired a group of domain names from YummyNames, which is the portfolio company associated with Tucows.

There was quite a bit of discussion about whether or not the domain name was registered in bad faith. Legally is a keyword, but it is also a trademark for the complainant. Here’s an excerpt from the decision discussing this:

Chicago Blackhawks NHL Team Wins Blackhawks.com UDRP

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It looks like the Chicago Blackhawks may be getting a domain name upgrade following its successful UDRP. The NHL team won the UDRP it filed against the Blackhawks.com domain name at the World Intellectual Property Organization (WIPO). Like other NHL teams, the Blackhawks use a NHL.com url for its website, and it promotes ChicagoBlackhawks.com on social media and in other marketing efforts.

From my reading of the decision, it seems like the panelist felt that the term in the domain name was not generic. It looks like the panelist believes Black Hawk and Blackhawks are well known trademarks because of the NHL team and because of Sikorsky helicopter. Here’s an excerpt from the decision discussing this aspect:

SSC.com Hit With UDRP

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It’s been a little while since I reported on a UDRP filing involving a valuable three letter .com domain name. I noticed a UDRP was just filed against SSC.com at the World Intellectual Property Organization. The UDRP is WIPO Case D2018-2422.

SSC.com was created in July of 1989, making it nearly 30 years old and one of the oldest domain names in existence. From what I can see using the DomainTools Whois History tool, the domain appears to have been registered to an entity in China since 2013. The domain name appears to have been registered under privacy protection, which may have been lifted as a result of the UDRP filing. The current registrant appears to be based in China.

When I visited SSC.com today, the domain name did not resolve, and I received this error message “ssc.com’s server IP address could not be found.” In fact, Google suggested another SSC related website, but not the complainant’s: “Did you mean http://ssc.edu/?” A search of Archive.org and Screenshots.com does not yield any results since 2013, so it does not appear as if the domain name had any advertising or anything that could indicate it is for sale.

According to

Hims.com Subject of UDRP Filing (Updated)

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Over the Summer, an article was published on Quartz referencing the Hims.com domain name and how it was reportedly being used at the time:

“Earlier this week, internet users noticed that the hims.com domain name redirected to viagra.com, prompting a theory that Pfizer had nabbed the domain. The theory now appears to be unfounded (hims.com now curiously redirects to menshealth.com), but Pfizer is still right to feel the heat. After 20 years of patent-protection on Sildenafil (ED competitors like Cialis and Levitra use other active ingredients), generic alternatives like Hims have flooded the market in the past year.”

When I visited Hims.com today, I was forwarded to Google.com.

According to the National Arbitration Forum (NAF) website and also seen on UDRPSearch, a UDRP was filed against the Hims.com domain name. Because of the venue where the UDRP was filed, the complainant in this UDRP will not be publicly reported until the conclusion of the proceeding. The filing is listed as case #1810653.

The “hims” company that was referenced as a competitor to Pfizer uses the ForHims.com domain name for its website. Here’s how that company describes itself: “hims is a one-stop shop for men’s wellness and personal care providing medical grade solutions for men’s hair loss, ED, skin care, and more.LinkedIn shows that this company was founded in 2017.

Assuming the UDRP was filed by this company (which is not a given),

RDNH Ruling in FlyingDog.com UDRP

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The Flying Dog Brewery filed a UDRP to try and wrest control of the FlyingDog.com domain name. Not only did the company lose the UDRP, but the panelist found that the brewery engaged in Reverse Domain Name Hijacking (RDNH).

When I noticed the UDRP filing, I was not surprised to learn that the brewery wanted the exact match domain name for its brand – FlyingDog.com. I would imagine the brewery has wanted the domain name for a while. Although the Whois record has been private for a few years, prior to that, the record was public and showed that the domain name was owned by a business called Flying Dog Enterprises. It seems pretty clear to me at least that the domain name likely was not registered in bad faith, and it is necessary to prove this (and more) to win a UDRP.

There were a couple of aspects to this case I found to be interesting, beyond the ultimate finding. The brewery reportedly offered to buy FlyingDog.com from the registrant for $17,000 in 2001. Sometime this past year, the company reportedly offered $15,000 to buy the domain name via broker. I am sure the registrant was probably perplexed that the offer would decrease when domain names have arguably gone up in value. The registrant countered at $225,000 for the domain name, and the complainant then filed the UDRP.

The panelist seemed pretty displeased with the complaint and let this displeasure be known in the section covering whether the domain name was registered and used in bad faith. Here’s an excerpt from that section of the decision:

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