The Complainant is Hims, Inc., United States of America (“United States”), represented by Jones Day, United States.
The Respondents are Privacy protection service - Whoisproxy.ru, the Russian Federation / Actiza Pharmaceutical, India and Plutov Andrei Valerevich, the Russian Federation.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 21, 2021, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 27, 2021.
The Center sent an email communication in both Russian and English regarding the language of the proceeding on September 30, 2021. The Complainant replied on September 30, 2021, requesting English to be the language of the proceeding. The Respondent did not reply on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint in both Russian and English, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on November 10, 2021.
The Center appointed Taras Kyslyy as the sole panelist in this matter on December 1, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a provider of men’s and women’s wellness and personal care products and treatments. Since its launch in 2017 the Complainant offers a modern approach to health and wellness and works to eliminate stigmas and make it easier for people to access care and treatment for the conditions that impact their daily lives. The products and services offered by the Complainant include the sale of prescription erectile dysfunction treatments, among others. The Complainant has invested a great deal of time and resources into developing its highly distinctive brand, and has extensively marketed and promoted the HIMS brand since its launch. The Complainant became a publicly traded company on the NYSE under the symbol “HIMS” on January 21, 2021.
The Complainant owns a global portfolio of HIMS trademarks, including for instance the United States trademark registration No. 5,752,037, registered on May 14, 2019, first used in commerce on November 1, 2017.
The Complainant has registered numerous domain names utilizing the HIMS Trademarks, and offers its goods and services on the domain name,
The disputed domain name
On August 27, 2021 and on September 3, 2021, the Complainant, using the contact information posted on the Respondents’ website, requested that the Respondents cease and desist from using the disputed domain names and from using the Complainant’s marks. The letters were returned as undeliverable.
5. Parties’ Contentions A. ComplainantThe disputed domain names are identical or confusingly similar to the Complainant’s trademark. Given the recognition of the Complainant’s trademark, and the fact that the disputed domain names incorporate the literal portion of the Complainant’s trademark in their entirety, consumers are likely to believe that the disputed domain names are affiliated with, authorized, or endorsed by the Complainant. The addition of the descriptive phrase “edpills” to the Complainant’s trademark increases, rather than mitigates, the potential risk of confusion. The addition of a top-level domain descriptor such as “.com” or “.net” in the disputed domain names does not affect a finding of confusing similarity.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not a licensee of or otherwise affiliated with the Complainant, and the Complainant has never authorized, otherwise condoned, or consented to the Respondents registration of the disputed domain names. The Respondents registered the disputed domain names through Privacy protection service - whoisproxy.ru to hide his or her identity. The Respondents are offering goods and services that are competitive to the Complainant’s own goods and services specifically, medications for the treatment of erectile dysfunction.
The disputed domain names were registered and are being used in bad faith. The Respondents clearly knew of the Complainant’s trademark at the time it registered and used the disputed domain names, as evidenced by the Respondents’ verbatim duplication of the literal elements of the marks in the disputed domain names, along with the descriptive phrase “edpills”. The Respondents registration and use of the disputed domain names constitutes bad faith registration and use by intentionally attempting to attract, for commercial gain, Internet users to the websites associated with the disputed domain names by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites associated with the disputed domain names. The disputed domain names differ from the Complainant’s trademark by only the addition of the descriptive phrase “edpills,” in an obvious attempt to catch web traffic of those who are looking for the Complainant’s goods and services for the treatment of erectile dysfunction. The Respondents registration and use of the disputed domain names is plainly designed to misdirect consumers in search of the Complainant’s official website, and as such amounts to bad faith. The Respondents use of the disputed domain names is commercial and it is being used to profit by selling competing products. The Complainant has also sent the Respondents cease and desist letters demanding that the Respondents stop using the disputed domain names and transfer it to the Complainant, to which the Respondents have failed to respond.
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of ProceedingsThe language of the Registration Agreement for the disputed domain name
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondents must be familiar with the English language since (і) the Respondents are familiar with the English language, because the disputed domain names resolved to a website containing English language content only; (2) the disputed domain names and generic Top-level-domain (“gTLD”) “.net” or “.com”, both are in Latin characters and not Cyrillic characters; (3) it would be unfair to require the Complainant to translate into Russian because it would result in additional expenses for the Complainant and cause unnecessary delay of the proceeding; (4) and given that the English language is the sole language used by the Respondents regarding the disputed domain names, proceeding in English comports with the spirit of fairness and justice of the process.
The Panel further notes that no objection was made by the Respondents to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondents in Russian and English that the Respondents are invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondents by a certain date, the Center would proceed on the basis that the Respondents had no objection to the Complainant’s request that English be the language of the proceedings. The Respondents had the opportunity to raise objections or make known its preference, but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Also another disputed domain name
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. ConsolidationThe Complainant requested the Panel to hear the present dispute brought against two Respondents as a consolidated Complaint.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”.
Section 4.11.2 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Complainant asserts, among other things, that the Respondents should be treated as one Respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with similar design. The Panel accepts this argument in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as “the “Respondent”.
C. Identical or Confusingly SimilarAccording to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLDs “.com” and “.net” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case the disputed domain names incorporate the entirety of the Complainant’s trademark.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that the additions of “edpills” and “1” do not prevent finding the confusing similarity in the present case.
Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate InterestsThe Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain names.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe,Victoria McCann, andRobert Hope,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The Respondent’s use of the confusingly similar disputed domain names on websites offering for sale overlapping products is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy. (See, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052)
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad FaithAccording to section 3.2.2 of the WIPO Overview 3.0 further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. In the present case the Respondent after registration of the disputed domain names incorporating the Complainant’s trademark with the addition of descriptive “edpills” standing for “erectile disfunction pills” placed websites offering for sale particularly pills for healing erectile disfunction, which is also one of the products the Complainant is selling. The Panel finds that the nature of the disputed domain names and its use confirms the Respondent knew or should have known of the Complainant’s prior trademark rights, which confirms the bad faith.
According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith while registering the disputed domain names confusingly similar to the Complainant’s trademark and using it for offering for sale the products overlapping with those on sale by the Complainant.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Taras Kyslyy
Sole Panelist
Date: December 3, 2021