Surterra Holdings, Inc. v Alexander Sanchez

WIPO Case No. D2024-0252

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Surterra Holdings, Inc. v. Alexander Sanchez

Case No. D2024-0252

1. The Parties

The Complainant is Surterra Holdings, Inc., United States of America (“United States”), represented by

Nelson Mullins Riley & Scarborough, LLP, United States.

The Respondent is Alexander Sanchez, United States.

2. The Domain Name and Registrar

The disputed domain name <goodblend.net> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2024. connection with the disputed domain name. On the same date, 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 (REDACTED FOR PRIVACY / See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2024, 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 date.

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 January 26, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 15, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 20, 2024.

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The Center appointed Evan D. Brown as the sole panelist in this matter on March 1, 2024. 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 a cannabis company operating in a number of states within the United States. It sells its goods via retail under the GOODBLEND mark, for which it also enjoys the benefits of registration in the United States (Reg. No. 6,502,962, registered on September 28, 2021). According to the WhoIs records, the disputed domain name was registered on March 23, 2022. The disputed domain name does not currently resolve to an active website and the Complainant asserts that to the best of the Complainant’s knowledge the disputed domain name has never resolved to an active site and has only ever been passively held by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical 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, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the

complainant’s trademark and the disputed domain name. Id. This element requires the Panel to consider
two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed

domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
GOODBLEND mark by providing evidence of its trademark registration.

The disputed domain name incorporates the GOODBLEND mark in its entirety. The disputed domain name is identical to the Complainant’s mark.

Accordingly, the Panel finds that the Complainant has established this first element under the Policy.

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B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this Point, the Complainant asserts, among other things, that (1) the Respondent is not commonly known by the GOODBLEND name or any variation thereof, (2) the Respondent cannot assert that it has been using the disputed domain name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparation to do so.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing and nothing in the record otherwise tilts the balance in the Respondent's favor.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s Complainant’s GOODBLEND mark. In the absence of a response from the Respondent to the Complaint, the Panel is guided solely by the information presented by the Complainant. Accordingly, the Panel finds the evidence submitted by the Complainant to support registration in bad faith.
trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest.
See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. The Complainant has submitted evidence that a
Google search for “Goodblend” would have alerted the Respondent to the prior existence of the

Even though the Respondent has passively held the disputed domain name, the Panel may still find bad faith. See WIPO Overview 3.0, section 3.3 (“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.”).

While Panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id.

The Complainant submits that the term “GOODBLEND” is not a dictionary term and is therefore a distinctive, coined term. As discussed above, a Google search for “Goodblend” produced a first page of search results exclusively related to the Complainant. The Complainant’s GOODBLEND retail brand was one of a select few companies in Pennsylvania and Texas to receive licenses to operate. The Panel finds that the foregoing establishes the distinctiveness and reputation of the Complainant’s GOODBLEND mark. Moreover, the Respondent registered the disputed domain name within six months of the Complainant’s registration of the GOODBLEND mark. The Panel finds that the Respondent’s nearly two (2) years of non-use of the disputed domain name combined with the distinctiveness and reputation of the GOODBLEND mark, and notably the lack of any Response putting forward a legitimate non-infringing purpose, provide the Panel with sufficient grounds to find that the Respondent’s use, or lack thereof, is in bad faith.

Accordingly, the Panel finds that the Complainant has established this third element under the Policy.

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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 <goodblend.net> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: March 22, 2024