Frankie Shop LLC v Carolina Rodrigues, Fundacion Comercio Electronico

WIPO Case No. D2023-5098

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Frankie Shop LLC v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2023-5098

1. The Parties

The Complainant is Frankie Shop LLC, United States of America (“United States”), represented by Coblence

Avocats, France.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <euthefrankieshop.com> 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 December 6, 2023. On December 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2023, 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 (Registration Private) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 13, 2023.

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 December 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2024.

page 2

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on January 31, 2024. 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 a company involved in the sale of clothing, accessories, shoes and cosmetics with headquarters in New York, United States. The Complainant is present in around 100 countries.

The Complainant owns various trademark registrations for THE FRANKIE SHOP or FRANKIE SHOP, among which:

- International trademark registration for THE FRANKIE SHOP No. 1648994, registered on October 12,
2021, in classes 3, 4, 9, 14, 18, 25 and 35;

- United States trademark registration for FRANKIE SHOP No. 5147070, registered on February 21, 2017
in class 35.

The Complainant owns several domain names containing the mark THE FRANKIE SHOP, among which the domain name <thefrankieshop.com> and the sub-domain <eu.thefrankieshop.com>, which redirects to its genuine website.

The disputed domain name was registered on November 20, 2023.

On December 4, 2023, the Complainant’s representatives sent a cease and desist letter to the Respondent.
This letter remained unanswered.

The disputed domain name resolves to a parking page containing pay-per-click (“PPC”) links to third-party websites.

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 its well-known trademark THE FRANKIE SHOP, despite its combination with the term “eu”.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Respondent has not been authorized by the Complainant to use the disputed domain name; (iii) the Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent making any legitimate non-commercial use of the disputed domain name.

Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. It considers that the Respondent could not ignore the Complainant’s mark given its well-known character and must have been aware of the risk of deception and confusion that would arise from the registration of the disputed domain name. Indeed, according to the Complainant, the disputed domain name could mislead the users searching for official information, which further amounts to use and registration in bad faith.

page 3

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i)      the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

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 a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The term “eu” is the common abbreviation for the “European Union”.

Although the addition of other terms (here “eu”) 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 the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

page 4

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.

Based on the information submitted by the Complainant, the Complainant has not granted to the Respondent
an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the
Respondent is commonly known by the disputed domain name.

No evidence suggests that the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services. Instead, based on the evidence provided by the Complainant, it appears that the Respondent used the disputed domain name in connection with a website containing PPC links to third-party websites. Applying UDRP paragraph 4(c), UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark, or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

Accordingly, the Respondent’s use of the disputed domain name does not constitute bona fide offering of goods and services.

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).

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 Complainant’s mark THE FRANKIE SHOP is distinctive. Furthermore, having reviewed the available record, the Panel accepts that the Complainant’s mark is well-known. Therefore, the Panel finds it likely that the Respondent was aware of the Complainant’s mark at the time of registration of the disputed domain name. The Panel therefore holds that the disputed domain name was registered in bad faith.

In addition, the presence of sponsored PPC links to third party websites on the page to which the disputed
domain name resolves supports a finding of use in bad faith. Indeed, the use of a webpage with sponsored
links suggests an intention on the part of the Respondent to exploit and profit from the Complainant’s
trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct
constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph
4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania
CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero
Media Corporation, WIPO Case No. D2009-0776; and AllianceBernstein LP v. Texas International Property

Associates, WIPO Case No. D2008-1230).

The Panel finds that the Complainant has established the third element of the Policy.

page 5

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 <euthefrankieshop.com> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: February 13, 2024