Hims, Inc. v Domain Privacy, Domain Name Privacy Inc

WIPO Case No. D2025-1137

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hims, Inc. v. Domain Privacy, Domain Name Privacy Inc.

Case No. D2025-1137

1. The Parties

The Complainant is Hims, Inc., United States of America (“USA” or “US”), represented by Protakedown Pte.

Ltd d/b/a PhishFort, Singapore.

The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus.

2. The Domain Name and Registrar

The disputed domain name <hims.store> (the “Disputed Domain Name “) is registered with Communigal

Communications Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2025. On March 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 25, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent (Domain Name Privacy Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, providing the registrant 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 the same day.

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 Respondent of the
Complaint, and the proceedings commenced on March 26, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 15, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 16, 2025.

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The Center appointed Nick J. Gardner as the sole panelist in this matter on April 25, 2025. 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 Background

The Complainant is headquartered in the USA and is active in the healthcare industry. The Complainant is a provider of wellness and personal care products and treatments.

The Complainant is the owner of US trademark registration 5752037 for the term HIMS registered on May
14, 2019 (the “HIMS trademark”)

The Complainant owns the domain name <hims.com>, which is linked to the Complainant’s main website promoting its business.

The Respondent registered the Disputed Domain Name on May 15, 2024. It resolves to a website which contains what appear to be “pay per click” (“PPC”) links to third party websites. The Panel infers those links are automatically generated by an underlying algorithm.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant says as follows.

The Disputed Domain Name is identical and/or confusingly similar to the HIMS trademark.

The Respondent has no rights or legitimate interests in the term “Hims”.

In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used
in bad faith. It says the Disputed Domain Name was registered or acquired primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the Complainant as the owner of
the trademark or service mark. The Complainant has a good faith belief that the Respondent intended to
transfer the Disputed Domain Name to the Complainant for valuable consideration in excess of the
Respondent’s out-of-pocket costs directly related to the Disputed Domain Name. Additionally, the Disputed
Domain Name has active MX and SPF records, which might be used to perform a phishing attack against the

Complainant via email distribution.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response.

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While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which

the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the HIMS trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.store”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the HIMS trademark is, on the evidence before the Panel, a term in which the Complainant
has rights. It is also a term which as far as the Panel is aware has no meaning save in relation to the
Complainant.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a bona fide offering of goods

or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no

trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or
permitted the Respondent to register or use the Disputed Domain Name or to use the HIMS trademark. The
Complainant has prior rights in the HIMS trademark which precede the Respondent’s acquisition of the
Disputed Domain Name. The Complainant has therefore established a prima facie case that the
Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the
burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate
interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No.
D2003-0455).

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The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you [the respondent] have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly related to the domain

name; or

(ii) you have 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 you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or
service on your web site or location.

The Panel concludes that paragraph 4(b)(iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s mark, and the Respondent might derive commercial gain as a result. The website linked to the Disputed Domain Name comprises PPC links to other third-party websites. The Panel infers that some users, once at this website might follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The

Respondent presumably earns “click through” linking revenue as a result. The Panel infers the website is
automatically generated. This does not however matter. It is well established that where a domain name is
used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of
the name’s association with the Complainant, such use amounts to use in bad faith, see for example
Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No.
D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,
WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex

Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.

See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0), section 3.5: “Can third-party generated material ‘automatically’ appearing on the
website associated with a domain name form a basis for finding bad faith?

Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.

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Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. In the light of this finding the Panel does not need to reach a conclusion on the other matters which the Complainant says support a

finding of bad faith registration and use.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <hims.store> be transferred to the Complainant.

/Nick J. Gardner/
Nick J. Gardner
Sole Panelist
Date: May 12, 2025