WholesomeCo, Inc. v. Sam Duke Johnson

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

WholesomeCo, Inc. v. Sam Duke Johnson

Case No. D2025-0809

1. The Parties

Complainant is WholesomeCo, Inc., United States of America (“United States”), represented by Dentons Durham Jones Pinegar, United States.

Respondent is Sam Duke Johnson, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2025. On February 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2025, the Registrar transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant, and providing the contact details.

The Center verified that the 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 March 10, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2025.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 3, 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

Complainant is a company based in the United States that offers various informational and other products related to cannabis under the mark WHOLESOMECO. Complainant owns a registration for its WHOLESOMECO mark, United States Registration No. 7,412,192 (registered June 11, 2024). The trademark application was filed on May 16, 2023, and claims a first use date of August 12, 2020.

The disputed domain name was registered on December 15, 2024. The disputed domain name resolves to a website that purports to offer products that are related to or which compete with the cannabis-related products offered by Complainant under its WHOLESOMECO mark while reproducing Complainant’s logo. Based on the available record, Respondent has no affiliation with Complainant, nor any license to use Complainant’s marks.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

Specifically, Complainant contends that it owns rights to the WHOLESOMECO mark, for which it has a valid, subsisting trademark registration. Complainant also asserts that it owns the domain name <wholesome.co> which Complainant uses to communicate with prospective consumers online about its products.

Complainant contends that Respondent has incorporated in full Complainant’s WHOLESOMECO mark into the disputed domain name, with only the addition of the term “dispensary.” Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name and rather has registered and is using it in bad faith, having likely acquired the disputed domain name for Respondent’s own commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark, WHOLESOMECO, for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Although the addition of other terms (here, the term “dispensary”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark for purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Complainant has provided evidence that the disputed domain name is being used to offer competing products while reproducing Complainant’s logo.

The Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Decision, the record includes evidence that the disputed domain name is being used to purportedly offer products that are related to or compete with those offered by Complainant under its WHOLESOMECO mark while using Complainant’s logo. Based on the nature of Complainant’s WHOLESOMECO product offerings, the composition of the disputed domain name, and on the competing merchandise offered via the website at the disputed domain name, the Panel determines that Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

The Panel finds sufficient evidence that Respondent registered and is using the disputed domain name in bad faith for purposes of paragraph (4)(a)(iii) of the Policy.

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 <wholesomecodispensary.com> be transferred to Complainant.

/Lorelei Ritchie/

Lorelei Ritchie

Sole Panelist

Date: April 17, 2025