WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Surterra Holdings, Inc. v. Simone Herbert
Case No. D2021-1868
1. The Parties
Complainant is Surterra Holdings, Inc., United States of America, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America.
Respondent is Simone Herbert, United States of America.
2. The Domain Name and Registrar
The disputed domain name <surterrawellness-miamibeach.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2021.
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 Respondent of the Complaint, and the proceedings commenced on June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 4, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 10, 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 Background
Complainant describes itself as “a developer and retailer of cannabis-based medical products intended to empower health and well-being” and “one of the nation’s fastest growing health and wellness companies”. Founded in 2014, Complainant operates 40 brick-and-mortar retail stores in the State of Florida, including the Miami area. According to the Complaint, Complainant offers “a wide variety of medical, health, and wellness products in multiple delivery options, including vaporizer pens, tinctures, oral sprays, topical creams, time released transdermal patches, and softgels under the SURTERRA Marks”.
Complainant also operates a commercial website at “www.surterra.com”. Complainant’s website and its brick-and-mortar stores feature Complainant’s SURTERRA and SURTERRA WELLNESS trademarks.
Annexed to the Complaint are several unsolicited news articles which make reference to Complainant and its SURTERRA and SURTERRA WELLNESS trademarks. Complainant also has a notable social media following, with 16,000 Facebook followers, 20,000 Instagram followers, and 6,000 Twitter followers.
Complainant states that it has the second largest market share in Florida for its line of cannabis-based wellness products. Its estimate revenue per year has been above USD 57 million.
The Domain Name was registered on September 29, 2020. The Domain Name resolves to a parking page containing various pay-per-click hyperlinks, including “Massage” and “Wellness Massage”.
According to Complainant, it has no relationship with Respondent and has never authorized Respondent to use its SURTERRA or SURTERRA WELLNESS marks in a Domain Name or otherwise.
Respondent has not disputed any of the foregoing allegations.
5. Parties’ Contentions
Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has provided sufficient evidence of trademark use and acquired distinctiveness to conclude that Complainant enjoys unregistered common law rights in the trademarks SURTERRA and SURTERRA WELLNESS for purposes of the Policy. The Panel also finds that the Domain Name is confusingly similar to those marks. The geographically descriptive term “Miami Beach”, which is where one of Complainant’s retail stores is located, does not prevent a finding of confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate, much less demonstrate, her bona fides vis-à-vis the Domain Name. It is undisputed that Complainant has not authorized Respondent to use its SURTERRA WELLNESS trademark in a Domain Name or otherwise.
The three non-exclusive “safe harbors” quoted above do not apply here. Respondent does not assert any efforts to use the Domain Name in connection with a bona fide offering of goods or services. There is no basis to conclude that Respondent is commonly known by the Domain Name. Respondent has not claimed that she is seeking to make a noncommercial or fair use of the Domain Name, and the Panel sees no such effort from the record here. Rather, Respondent is deriving per-click revenue from the website.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Based on the undisputed record here, it is apparent that Respondent had Complainant’s mark in mind when registering the Domain Name. The word SURTERRA is a coined word, and the additional word WELLNESS in the Domain Name makes it plain that Respondent was aware of Complainant and its mark.
With respect to bad faith use, Complainant plausibly alleges that Respondent derives per-click revenue at the landing page to which the Domain Name resolves. Respondent does not deny this. This targeting of Complainant’s trademark in order to derive revenue runs afoul of the above-quoted Policy paragraph 4(b)(iv) and therefore constitutes bad faith use of the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <surterrawellness-miamibeach.com> be transferred to Complainant.
Robert A. Badgley
Date: August 19, 2021