Lucozade Ribena Suntory Limited v Domain Admin

WIPO Case No. D2025-0374

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lucozade Ribena Suntory Limited v. Domain Admin

Case No. D2025-0374

1. The Parties

The Complainant is Lucozade Ribena Suntory Limited, United Kingdom, represented by Hogan Lovells

(Paris) LLP, France.

The Respondent is Domain Admin, United States of America (the “United States”).

2. The Domain Name and Registrar

The disputed domain name <lucozadesporticekick.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2025. amended Complaint on February 7, 2025.

On January 31, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 2, 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 (REDACTED FOR PRIVACY, Super Privacy Service LTD c/o
Dynadot) and contact information in the Complaint. The Center sent an email communication to the
Complainant on February 3, 2025, providing the registrant and contact information disclosed by the
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 February 12, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was March 4, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 5, 2025.

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The Center appointed Peter Kružliak as the sole panelist in this matter on March 7, 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 United Kingdom and produces soft drinks, including the soft drink
Lucozade, which was developed in 1927 by a pharmacist and originally named Glucozade before being
renamed Lucozade in the 1930s. The present Lucozade’s product range includes Lucozade Energy,
Lucozade Sport, and Lucozade Zero. The Complainant’s revenue for the fiscal year ending on March 31,

2023, were GBP 543 million.

The Complainant is a part of the Suntory Group, which was founded as a family-owned business in 1899 in

Osaka, Japan and is a global industry leader with a diverse portfolio of soft drinks, spirits, beer, and wine.

The Complainant is the owner of inter alia the following LUCOZADE trademark registrations:

− United States Registration No. 1550449 LUCOZADE, filed on October 17, 1988, and registered on August 1, 1989, for goods in class 32;

− United Kingdom Trade Mark No. UK00000516294 LUCOZADE, filed and registered on September 23, 1930, for goods in classes 5 and 32; and

− European Union Trade Mark No. 003765393 LUCOZADE (word), filed on April 26, 2004, and

registered on September 19, 2005, for goods and services in classes 21, 33, and 41.

(collectively the “LUCOZADE trademark”)

The Complainant is also the owner of the following LUCOZADE SPORT ICE KICK trademark registration:

− European Union Trade Mark No. 019066421, LUCOZADE SPORT ICE KICK (word), filed on August 12, 2024, and registered on November 22, 2024, for goods in class 32.

(the “LUCOZADE SPORT ICE KICK trademark”)

The Complainant’s main website is published under the domain name <lucozade.com>. Furthermore, the record shows that Superbrands considers LUCOZADE as one of the United Kingdom’s strongest consumer brands and the market leader in the energy drink category.

The Respondent is an undisclosed entity from the United States. The disputed domain name was registered on August 12, 2024, and it resolves to a GoDaddy parking page offering the disputed domain name for sale for USD 2,850, which based on the available record (when the Complaint was filed) increased at the check- out page to USD 2,862.70 and on the day of the Decision increases to USD 3,520.47.

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 contends that the disputed domain name is confusingly similar to the LUCOZADE trademark of the Complainant, as it is composed of the identical sign LUCOZADE and the presence of the other terms does not prevent such finding. The disputed domain name also comprises the Complainant’s LUCOZADE SPORT ICE KICK trademark in its entirety, altered only by the omission of the spaces between

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the words making up the Complainant’s mark, thus the disputed domain name is identical to the LUCOZADE
SPORT ICE KICK trademark.

The Complainant further asserts that the Respondent has no rights nor legitimate interests in the disputed domain name, as

− the Respondent is not using the disputed domain name in connection with any bona fide offering of

goods or services, since the Respondent is not a licensee or distributor of the Complainant and the domain name was registered on the same day as the LUCOZADE SPORT ICE KICK trademark application was filed, excludes bona fide offering of goods and services;

− the Respondent is not commonly known by the disputed domain name, since the identity of the

Respondent was disclosed as “Domain Admin”, which bears no resemblance to the disputed domain name, and there is no evidence that the Respondent acquired any trademark rights to LUCOZADE or LUCOZADE SPORT ICE KICK, which are contained in the disputed domain name; and

− the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, since the website, to which the disputed domain name resolves, offers the sale of the disputed domain name for significant profit, which signals an intent of the Respondent to derive commercial gain, thus excluding the legitimate noncommercial or fair use of the disputed domain name.

And finally, the Complainant submits that the registration and use of the disputed domain name by the Respondent constitutes bad faith registration and use, as

− in light of the composition of the disputed domain name, comprising the Complainant’s LUCOZADE trademark with the addition of “sport ice kick”, the Respondent could not credibly argue that it did not have prior knowledge of the Complainant and its LUCOZADE trademark when it registered the disputed domain name and the fact that the Respondent registered the disputed domain name on the same date as the

Complainant filed a trademark application for LUCOZADE SPORT ICE KICK is evidence of the evidence of the Respondent’s registration of the disputed domain name in bad faith; and

− the Respondent registered the disputed domain name opportunistically on the same date as the

Complainant filed a trademark application for its LUCOZADE SPORT ICE KICK mark in bad faith and by offering the disputed domain name for sale for a price in excess of its out-of-pocket costs, the Respondent is also using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the 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.

The Complainant has shown rights in respect of the LUCOZADE trademark and LUCOZADE SPORT ICE KICK trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Regarding the LUCOZADE SPORT ICE KICK trademark the Panel notes that the application was filed at the same date when the disputed domain name was registered. The subsequent registration of this trademark is not relevant for the purposes of evaluating the first element, noting the trademark was registered before the submission of the Complaint, which is supported also by previous Panel decisions. WIPO Overview 3.0,

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section 1.1. See also Cegedim v. Super Privacy Service LTD c/o Dynadot / Sedat Yazar, WIPO Case No.
D2021-4134.

When considering the LUCOZADE trademark from the perspective of the first element, although the addition of other terms, here, “sport”, “ice”, and “kick”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy, especially when considering the descriptive

nature of the added terms. The disputed domain name is thus confusingly similar to the LUCOZADE
trademark WIPO Overview 3.0, section 1.8.

As for the LUCOZADE SPORT ICE KICK trademark, it is clear that the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the LUCOZADE SPORT ICE KICK trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The available record does not show that the Respondent would have acquired any rights to use the LUCOZADE or LUCOZADE SPORT ICE KICK trademark from the Complainant, such as license or assignment, or that the Respondent distributes the goods of the Complainant. Furthermore, the disputed domain name resolves to a parking page that purports to offer the disputed domain name for sale for a price of USD 2,850, which increases in cart, once the sales process is initiated. Noting the composition of the dispute domain name, such use could not be considered according to the Panel as bona fide offering. There is also no evidence of demonstrable preparations for use of the disputed domain name for bona fide offering in the record.

The available record also does not show any trademark registrations or earlier relevant rights of the known by the disputed domain name.

Finally, the Panel was not able to identify any reason why the present use of the disputed domain name by the Respondent should be considered as legitimate noncommercial or fair use. First of all, the disputed domain name clearly contains the LUCOZADE trademark of the Complainant (that had already been registered at the time the disputed domain name was registered for a significant period of time) in its entirety and the other terms used in the disputed domain name correspond to another trademark of the Complainant,

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whereby the composition of the disputed domain name suggests affiliation or sponsorship of the
Complainant as the trademark owner, which prevents a finding of fair use. WIPO Overview 3.0, section
2.5.1.

Furthermore, the present use of the disputed domain name, which resolves to website offering the disputed domain for sale with requested price that exceeds the costs of registration, should be considered in line with previous Panel decisions, as use of commercial nature. WIPO Overview 3.0, section 2.5.3. See also Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. 昭龙 叶, WIPO Case No. D2022-4696 and Meta

Platforms, Inc. v. Ibsam Shahzad, WIPO Case No. D2021-3774.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel points out the composition of the disputed domain name, which contains the coined LUCOZADE trademark of the Complainant in its entirety and moreover is identical to the LUCOZADE SPORTS ICE KICK trademark. Referring to the fact that the disputed domain name was registered on the same day as the Complainant filed the application for the LUCOZADE SPORTS ICE KICK trademark, the Panel finds it inconceivable that the Respondent was unaware of the earlier trademark rights to the LUCOZADE trademark and was not trying to unfairly capitalize on the Complainant’s yet unregistered trademark rights to the LUCOZADE SPORTS ICE KICK trademark. Rather, these circumstances show a clear intention of the Respondent to take advantage of the Complainant and its trademark rights, which supports the finding of bad faith registration.

As for the use of the disputed domain name, the Panel points out that based on the available record (not rebutted by the Respondent) it is clear that the Respondent intends to sell the disputed domain name for profit as the disputed domain name resolves to a website that facilitates this process and the requested sales

price is in excess of the standard costs of domain registration. In this regard, Panel notes (i) the composition of the disputed domain name described above, (ii) the distinctiveness of the LUCOZADE trademark, and (iii) the circumstances under which the disputed domain name was registered at the same day as the
LUCOZADE SPORTS ICE KICK trademark was filed, and finds that in the circumstances of this case the
present use of the disputed domain name supports a finding of bad faith under the Policy.

WIPO Overview 3.0, section 3.1.1

The Panel finds that the Complainant has established the third element 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 <lucozadesporticekick.com> be transferred to the Complainant.

/Peter Kružliak /

Peter Kružliak

Sole Panelist
Date: March 21, 2025