FourLokoBoys.com: Beer corp declined to pay $12k — then filed a UDRP

Phusion Projects LLC registered the mark FOUR LOKO twelve years ago for use with alcoholic beverages. Four guys rolling a new brand for their podcast came up “organically” with the name “four loko boys” and registered the domain FourLokoBoys.com in April.

The stylized use of “loco” meaning “crazy” in Spanish used “k” instead, landing them into trouble with the Complainant. The latter gawked at the “loko” asking price of $12,000 dollars for the domain and filed the UDRP.

The Respondent provided a copy of its podcast, aired on September 5, 2024, where the words “Four Loko Boys” arose organically, without reference to the Complainant or its alcoholic beverage sold under the FOUR LOKO mark. The domain was registered in April 2025.

The forum panelist sided with the Respondent, noting:

The Panel notes that in the event that further information arises that suggest that the motives of the Respondent in registering the Domain Name was anything other than the intention to use in a podcast unconnected to the Complainant or alcoholic beverages, there may be grounds to consider a refiled complaint, subject to the applicable criteria.

Final decision: Deny the transfer of FourLokoBoys.com to the Complainant. Crazy, I know.

Phusion Projects, LLC v. Rikin Shah – Claim Number: FA2504002152127

PARTIES

Complainant is Phusion Projects, LLC (“Complainant”), represented by Robert D. Leighton of Goldberg Kohn Ltd., Illinois, USA. Respondent is Rikin Shah (“Respondent”), New York, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is fourlokoboys.com (“Domain Name”), registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 23, 2025; Forum received payment on April 23, 2025.

On April 24, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the fourlokoboys.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fourlokoboys.com. Also on April 25, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on May 2, 2025.

On May 2, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

On May 5, 2025 the Panel issued a Panel Order under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). This order noted that the Response a) raised matters that the Complainant may not have been aware of in the preparation of the Complaint b) proposed settlement discussions and c) indicated that the Respondent sought to file a more detailed Response. In such circumstances the Panel provided additional time, initially until May 9, 2025 but at the request of Complainant extended to May 13, 2025 for the Complainant to provide additional evidence and submissions in response to the Response. Under the terms of the Panel Order Respondent had until May 15, 2025 and later May 19, 2025 to provide any further evidence and submissions that it wished to file in this matter. The Complainant provided its additional material on May 13, 2025 and Respondent provided its additional material on May 19, 2025.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Phusion Projects LLC, is a beverage company that amongst other beverages, is the owner of all intellectual property in the FOUR LOKO brand. Complainant has rights in the FOUR LOKO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,428,131, registered November 5, 2013). Respondent’s fourlokoboys.com domain name is identical or confusingly similar to Complainant’s FOUR LOKO mark as it incorporates the mark in full, merely adding the generic term “boys” and the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights and legitimate interests in the fourlokoboys.com domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its FOUR LOKO mark in the Domain Name. Respondent does not use the Domain Name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Indeed the Domain Name does not resolve to an active website.

Respondent registered and uses the fourlokoboys.com domain name in bad faith. Respondent fails to make an active use of the Domain Name and hopes to cause confusion for Complainant’s actual or potential customers through the use of the FOUR LOKO mark in the Domain Name. Respondent had actual knowledge of Complainant’s rights in the FOUR LOKO mark due to the longstanding use and fame of the mark in commerce.

B. Respondent

Respondent states that he established a podcast, known as Four Loko Boys, on April 13, 2025, and is unconnected to Complainant and its products. Respondent has launched an Instagram account to promote its Podcast and also raises concerns about possible hacking of its Instagram account. Respondent also offers to transfer the Domain Name to Complainant in exchange for $12,000 to cover domain registration costs, the fair market value of the Domain Name, podcast rebranding expenses, business disruption, and the recognition of its good faith use of the Domain Name for its content creation business.

C. Additional Submissions – Complainant

Respondent’s offer to sell the Domain Name, which was registered in awareness of Complainant’s well-known FOUR LOKO mark to Complainant for $12,000 in the Response, illustrates the bad faith nature of Respondent’s conduct in this matter. Such an offer demonstrates Respondent’s registration and use of the Domain Name in bad faith.

Respondent’s evidence of its “legitimate use” consists of undated screenshots stated to show use of the Domain Name for a podcast shortly before the registration of the Domain Name. Complainant submits that such use would infringe Complainant’s mark and even if such use were genuine, such use would not give rise to rights to the Domain Name, since the use would merely operate to trade upon the public recognition and goodwill associated with Complainant’s FOUR LOKO mark and divert users to Respondent’s Website. The use of a Domain Name to infringe or intentionally trade upon the fame of another is not a bona fide offering or legitimate use.

There is no conceivable non-infringing use of the Domain Name noting that the FOUR LOKO mark is uniquely located with the Complainant and Respondent clearly chose the mark as an intentional reference to Complainant’s brand.

C. Additional Submissions – Respondent

Respondent’s states that he started developing a podcast concept in September 2024 and in a recording session the name “Four Loko Boys” arose organically. The Domain Name registered on April 10, 2025, the initial podcasts were published under the Four Loko Boys name on April 14, 2025 and the Instagram account @thefourlokoboys was registered at a similar time.

Respondent denies that the Domain Name was sought to be sold for profit, rather the settlement offer was merely to cover additional costs incurred in rebranding his podcast. Respondent also includes allegations that Complainant has engaged in Reverse Domain Name Hijacking by misrepresenting the timeline and direction of the changes in the name of his podcast in its supplemental submission

Respondent attaches a transcript of a podcast recording said to have taken place on September 5, 2024, where the words “Four Loko Boys” arose organically, without reference to the Complainant or its alcoholic beverage sold under the FOUR LOKO mark.

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, has not established all required elements of its claim, and thus its complaint must be denied.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has rights in the FOUR LOKO mark based on registration with the USPTO (e.g. Reg. No. 4,428,131, registered November 5, 2013). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).

The Panel finds that the fourlokoboys.com domain name is confusingly similar to Complainant’s FOUR LOKO mark as it consists of the FOUR LOKO mark and with the addition of the generic term “boys” and the “.com” gTLD. The addition of a descriptive term and a gTLD to a trade mark fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

The Panel holds that Complainant has not made out such a prima facie case. Rather, there are factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that “can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….”).

The Domain Name does not resolve to an active website but the Panel is satisfied on the evidence before it that the Respondent has made demonstrable preparations to use the Domain Name in connection with a website to promote its podcast which it offers under the name “Four Loko Boys”. These preparations include actually launching the podcast (including recording and releasing two, hour-long episodes on April 13, 2025 under the name) and registering a corresponding Instagram account for promotional purposes. While the evidence the Respondent has provided is limited (in particular Respondent has not provided a detailed plan for what the website will look like), this is understandable given that the Domain Name was registered on April 10, 2025, the podcast was launched on April 13, 2025 and the Complaint was filed on April 23, 2025.

The Panel also accepts that the term “Four Loko Boys” has a descriptive meaning, “Loko” being a misspelling of the Spanish word “loco” meaning “crazy”, and thus the phrase “Four Loko Boys” would be a plausible and understandable name choice for a podcast consisting of four male hosts discussing crazy or unusual things. The Respondent also provides a transcript illustrating the organic nature of the conversation that led to the choice of the name, though the Panel notes the absence of an explanation of why the Respondent chose “Four Loko Boys” instead of “Four Loco Boys”, “loco” being the correct spelling of the term.

However, the Panel acknowledges that deliberate misspellings, such as the replacement of a “c” with a “k” or an “s” with a “z” are not uncommon, and can be used to attract attention. On the balance of probabilities the Panel accepts the Respondent’s explanation for his choice of the podcast name, which resulted in the registration of the Domain Name, being an explanation relating to the descriptive meaning of phrase “four loko boys” rather than the similarity of the phrase to the Complainant’s mark. The Panel also notes that (other than the settlement offer, discussed below) there is no other evidence of any conduct engaged in by the Respondent that suggests the registration and use of the Domain Name is for anything other than for a bona fide offering of services, such as phishing e-mails, misleading statements, a pattern of conduct of abusive registrations or the like.

The Panel does not accept the Complainant’s submissions that there is no conceivable non-infringing use of the Domain Name, noting the existing generic meaning of the term “four loko boys” and the fact that there is no evidence thus far before the Panel that the Respondent or its Podcast has sought to make any reference to the Complainant or alcoholic beverages. The Panel does accept that the Respondent’s settlement offer of US$12,000 would be well outside any out-of-pocket costs incurred by the Respondent in registering the Domain Name (or indeed any likely rebranding expenses) however as noted section 3.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition if a Respondent has rights or legitimate interests in a domain name then a settlement offer greater than out-of-pocket costs will not be evidence of bad faith. In this case, the decision of the Respondent to offer to settle the dispute for a payment of US$12,000 does not impact on my conclusion on the question of rights or legitimate interests.

A panel has to be positively satisfied that a respondent lacks rights and legitimate interests under this element of the Policy. While acknowledging the limitations of the Respondent’s evidence, in the Panel’s evaluative judgement of the evidence before it, the Panel is not satisfied that the Respondent lacks rights and legitimate interests. The Panel considers that any questions of fact regarding the nature and legitimacy of the Respondent’s podcasts as well as the broader scope of the Complainant’s trademark rights are better resolved in a venue that has explicit forensic powers which a Panel under the Policy does not have.

Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”. Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). See also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”). The Panel acknowledges that Respondent’s conduct (including potential subsequent use of the Domain Name) may infringe Complainant’s FOUR LOKO mark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.

Specifically, the claims raised in the Complainant’s supplemental submissions that the Respondent’s podcast (and hence the Domain Name and any website located on it) has and will improperly trade upon the public recognition and goodwill associated with Complainant’s FOUR LOKO mark) is a matter beyond the scope of the present proceeding, which is summary in nature and hence the limited evidence that Respondent offers and promotes a podcast unconnected to the Complainant or its business under the generic phrase “four loko boys” is a sufficient basis to find that the Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name. The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable). If the Complainant wishes to bring proceedings against the Respondent for trademark infringement or passing off, such a proceeding is more appropriately brought in a court of competent jurisdiction.

The Panel notes that in the event that further information arises that suggest that the motives of the Respondent in registering the Domain Name was anything other than the intention to use in a podcast unconnected to the Complainant or alcoholic beverages, there may be grounds to consider a refiled complaint, subject to the applicable criteria.

Registration and Use in Bad Faith

In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.

REVERSE DOMAIN-NAME HIJACKING

Respondent alleges that Complainant has engaged in reverse domain-name hijacking by initiating this dispute when it should have known that it could not succeed. In particular Respondent submits that the Complainant has misrepresented the timeline and direction of the changes in the name of his podcast in its supplemental submission.

The Panel does not find Reverse Domain Name Hijacking in this matter. The Domain Name wholly incorporates the FOUR LOKO mark and at the date of filing was not in active use. The Panel accepts that Complainant was not aware of Respondent’s podcast at the date of filing, noting that it had been launched only 10 days earlier. Moreover, to the extent Complainant has made errors in characterising certain changes in the name of the podcast, these changes are understandable and the Complainant was not in possession of the details of the changes made by the Respondent. For these reasons, there is insufficient basis in the record for the Panel to conclude that the Complaint was filed without any good faith basis or reasonable prospect of success or that the Complainant acted improperly in any manner. The Panel therefore declines Respondent’s request to declare that Complainant filed the Complaint in an attempt at Reverse Domain Name Hijacking.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the fourlokoboys.com domain name REMAIN WITH Respondent.

Nicholas J.T. Smith, Panelist

Dated: May 20, 2025

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