In our first in the series on generic words, personal names, acronyms and similar domain names, we looked at Karma International, LLC v. David Malaxos: FORUM, FA1812001822198 , concerning <karma.com>. Now we are going to have a look at an acronym case, <hims.com>, one of an increasing number of cases where trademark owners claim the domain name copies their trademark, but where the respondent/registrant says, no, it is registered and being used for its generic value, not for its value as the complainant’s trademark.
Hims, Inc. v. Sharad Patel
FORUM, Claim NO: FA1810001810653
November 16, 2018
The Complainant claimed a common law trademark in HIMS, although it did not have a registered trademark. The Respondent agreed to the claim that there was a common law trademark, so the parties did not need to argue about it. Complainant also had a domain name, <forhims.com>, which it used for its website to sell hair and other men’s products.
The Respondent had registered the domain name <hims.com> which it used in a website and claimed that it was an acronym for the descriptive phrase “health information management systems.” But was it actually using the domain name and the website to promote goods coming within the generic meaning of “health information management systems”. Yes, because it produced in evidence screenshots with health related content, which was also the Respondent’s own professional field. So the Respondent had shown a right to register the domain name.
By that time, the claim was lost, but the panel went on to consider bad faith. Here a new fact emerges. The Respondent had held its domain name for 20 years before the Complainant first used its HIMS trademark! So there could not have been any bad faith intention by the Respondent at the time it registered the domain name; thus: no bad faith registration. Game over.
The Panel went further and said the registration of the domain name had actually been in good faith. A good quote from the case is: “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”. So the case was won by the Respondent and it kept the domain name.
The Case raised another side issue. As the Respondent had owned the domain name for so long, could its renewal of the domain name several times count as several new registrations and hence re-activate bad faith registration on those occasions? Nice try, but no. That argument was accepted a few times some years ago but not these days.
To read the whole decision: https://www.adrforum.com/domaindecisions/1810653.htm