Lucozade Ribena Suntory Limited v Nanci Nette

WIPO Case No. DME2025-0008

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lucozade Ribena Suntory Limited v. Nanci Nette

Case No. DME2025-0008

1. The Parties

The Complainant is Lucozade Ribena Suntory Limited, United Kingdom, represented by Walker Morris

Solicitors, United Kingdom.

The Respondent is Nanci Nette, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <lczd.me> is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2025. On
April 9, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in
connection with the disputed domain name. On April 9, 2025, the Registrar transmitted by email to the
Center its verif ication response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (REDACTED FOR PRIVACY, Domains By Proxy, LLC) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
April 10, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on

April 11, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 15, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on May 6, 2025.

page 2

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 12, 2025. The Panel f inds 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 part of the Suntory group, a global beverage conglomerate. In 2013, the Suntory group purchased the business associated with the “Lucozade” and “Ribena” brands from GlaxoSmithKline for GBP 1.35 billion.

Wikipedia describes “Lucozade” as a brand for a range of soft drinks and energy drinks. According to the is the third largest sof t drink brand there. It is also marketed in 31 other markets globally.

Complaint, a product was f irst marketed under the brand in the United Kingdom in the 1920s. The

The Complaint includes details of 12 trademarks registered in the United Kingdom for LUCOZADE, the oldest of which is United Kingdom Registered Trademark No UK00002137862 which was registered with ef fect from July 3, 1997, for a range of goods in International Classes 16, 25, 28, and 32 including non- alcoholic drinks. The Complainant also draws attention to:

(1) United Kingdom Registered Trademark No UK00906796221 which has been registered with ef fect f rom April 1, 2008, for a range of goods and services in International Classes 5, 9, 16, 29, 30, 32, 38, 41, and 44; and

(2) United Kingdom Registered Trademark No UK00003779024, LUCOZADE, which has been registered

with ef fect from April 19, 2022, in respect of goods and services in International Classes 9, 35, 38, and 41
including for, amongst other things, online retail store services.

According to the WhoIs report, the disputed domain name was registered on December 19, 2023.

The Complainant says it was formerly the registrant of the disputed domain name, but it was being managed on its behalf by a third party and, in circumstances which have not been made clear in the papers before the Panel, the registration was allowed to lapse.

When the Complainant discovered the situation, the disputed domain name had already been registered by the Respondent. The disputed domain name currently resolves at least at times to a parking page which displays pay-per-click (PPC) advertising links including for gambling sites.

The Complainant claims that, when it was the registrant, its products included a QR code that directed to a website related to the Complainant’s product. Products featuring that QR code are said to be still in circulation.

5. Discussion and Findings

No Response has been f iled. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

page 3

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

A. Identical or Confusingly Similar

The f irst element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant's trademark rights.

It is well accepted that the f irst 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 proven ownership of registered trademarks for LUCOZADE in the United Kingdom.

The comparison of the disputed domain name to the Complainant's trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of inf ringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview 3.0, section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.me” TLD, the disputed domain name consists of the Complainant’s registered trademark but with all the vowels omitted – what the Complainant calls “disemvowlment”. The Panel accepts that the disputed domain name can be seen or understood as the consonants comprising the Complainant’s

trademark and as representing the Complainant’s trademark. That practice was of ten used by people
engaging in thumb typing on mobile devices particularly.

Accordingly, the Panel f inds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the f irst limb of the Policy is satisf ied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

page 4

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the
Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of , or demonstrable

preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in
connection with a bona f ide of fering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While 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 often impossible 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. 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.

The date on which the Respondent became the registrant is not clear on the record in this case but, even if it
is taken as December 19, 2023, the Respondent registered the disputed domain name well af ter the
Complainant began using the trademark and also af ter the Complainant had registered its trademark.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent af f iliated with it.

The disputed domain name is not derived f rom the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

The use of the disputed domain name to generate revenue through PPC links does not qualify as a legitimate noncommercial or fair use for the purposes of paragraph 4(c)(iii) of the Policy.

Panels have accepted that the registration of a domain name and use to generate revenue through PPC advertising can be legitimate under the Policy – provided the use does not seek to take unauthorised advantage of the trademark signif icance of some other person’s trademark.

In the present case, the disputed domain name can be seen as a four letter acronym which could potentially reference a number of different things or people. On the other hand, there is considerable potential for the acronym to be taken to refer to the Complainant’s LUCOZADE trademark to those familiar with that

trademark.

In this context, the Complainant does say its LUCOZADE products are distributed in 31 dif ferent markets around the world. The Complainant does not, however, explain what those 31 different markets are or what volumes of sales or advertising it has undertaken in those markets. On the other hand, it seems clear that the Complainant’s trademark is very well-known in the United Kingdom – at least.

page 5

Further, the Panel’s search using the Full Text Search on WIPO Panel Decisions by named respondent discloses that the Respondent has been involved in 55 prior disputes. At least the 20 most recent decisions resulted in orders to transfer the domain name in issue and, as in this case, the Respondent did not submit a Response. Some of the domain names in those earlier decisions trade on recognisably famous or well- known trademarks – e.g., <wwwlinkedin.com> and <canva-login.com>.[1] A number of them concern

[1] LinkedIn Corporation v Nanci Nette, WIPO Case No. D2023-2290 and Canva Pty Ltd v Nanci Nette,

trademarks of businesses in countries outside the United States. Those are not trademarks that the Panel recognises. Those disputes show that the Respondent is familiar with, or has a track record of f inding, domain names which closely resemble trademarks in foreign countries, but which do not appear to have achieved prominence in the United States.

Further, while the circumstances around the lapsing of the Complainant’s registration of the disputed domain name and the Respondent’s acquisition are not clear, it appears likely that the Respondent obtained the registration through an auction process such as “drop-catching”. [2]

[2] The Panel’s Google search disclosed a report on “namebio.com” that the disputed domain name was last sold at auction on

In these circumstances, the Panel considers the inference is available that the Respondent was likely aware of the association of the disputed domain name with the Complainant’s trademark and that motivated the acquisition. On that basis, the use being made of the disputed domain name does not qualify as a good faith of fering of goods or services as it appears to have been motivated by an intention to take advantage of its resemblance to the Complainant’s trademark in similar fashion to, for example, Supermac’s (Holdings) Limited v Domain Administrator, DomainMarket.com, WIPO Case No D2018-0540.

These matters, taken together, are suf f icient to establish a prima facie case under the Policy that the
Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the
Respondent has adopted the disputed domain name, therefore, calls for explanation or justif ication. The
Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement.

Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Group One Holdings Pte Ltd v. Steven Hafto WIPO Case No. D2017-0183.

To that end, paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy.

For the reasons given in Section 5B above, it appears that the Respondent registered the disputed domain name in the circumstances outlined in paragraph 4(b)(iv) as an example of registration and use in bad faith:

“by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a
likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or
location.”

Given the pattern of the Respondent’s conduct in registering domain names trading on other persons’ trademarks referred to in Section 5B above, paragraph 4(b)(ii) may well be satisf ied also:

“(ii) [the Respondent has] registered the [disputed] domain name in order to prevent the owner of the

page 6

trademark or service mark from ref lecting the mark in a corresponding domain name, provided that [the

Respondent has] engaged in a pattern of such conduct”.

Accordingly, the Complainant has established all three requirements under 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 <lczd.me> be transferred to the Complainant.

/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: May 26, 2025

WIPO Case No. D2023-3651.

January 23, 2025. As neither party has relied on it, the Panel considers it unsafe to rely on that.