Frankie Shop LLC v Dorothy Kim

WIPO Case No. D2025-1460

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

FRANKIE SHOP LLC v. Dorothy Kim

Case No. D2025-1460

1. The Parties

The Complainant is FRANKIE SHOP LLC, United States of America (“United States”), represented by

Coblence Avocats, France.

The Respondent is Dorothy Kim, United States.

2. The Domain Name and Registrar

The disputed domain name <thefrankieshopi.shop> is registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2025. On connection with the disputed domain name. On April 10, 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 Purposes, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2025, 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 April 14, 2025.

The Center verified that the Complaint together with the amendment to 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 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 notified the Respondent’s default on May 6, 2025.

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The Center appointed Evan D. Brown as the sole panelist in this matter on May 12, 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 in the business of selling clothing, accessories, shoes, and cosmetics. It has operations in several countries around the world. It owns the trademark THE FRANKIE SHOP, for which it enjoys the benefits of registration in a number of jurisdictions around the world, including the United States (Reg. No. 7028712, registered on April 18, 2023).

According to the WhoIs records, the disputed domain name was registered on March 21, 2025. The Respondent sought to conceal its identity using a privacy service. The Respondent has used the disputed domain name to direct visitors to a site that sells fragrances and clothes, and, inter alia displays the names of the Complainant’s products and photographs of its products and models.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 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. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark section 1.2.1.

certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the

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The disputed domain name incorporates the THE FRANKIE SHOP mark in its entirety with the additional letter “i”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s THE FRANKIE SHOP mark. See WIPO Overview 3.0, section 1.8. The THE FRANKIE SHOP mark remains recognizable for a showing of confusing similarity under the Policy.

It is standard practice when comparing a disputed domain name to a complainant’s trademarks, to not take the Top-Level Domain (“TLD”) into account. See WIPO Overview 3.0 at 1.11.1 (“The applicable [TLD] in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

On this point, the Complainant asserts, among other things, that: (1) the Respondent is in no way affiliated with the Complainant and has not been authorized by the Complainant to use its trademarks or to proceed with the registration of the disputed domain name; (2) the Respondent is neither a licensee nor a third party authorized to use the Complainant’s trademarks, including as a domain name; (3) the Complainant does not know the Respondent and has never had any relationship with it; and (4) the Respondent is using the

disputed domain name to deceive Internet users by seeking to imitate the Complainant and selling
counterfeit versions of the Complainant’s products.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. While UDRP panels have recognized limited rights for resellers or distributors to nominally use a trademark for its source-identifying function, such fair use is qualified under the so-called “Oki Data” test enshrined in section 2.8.1 of the WIPO Overview 3.0. Here, noting the lack of disclaimer on the website which the disputed domain name resolves to, the disputed domain name cannot qualify as fair use.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith.

The record indicates that the Respondent registered a domain name that closely mimics the Complainant’s distinctive trademark and its official domain name. It then used the disputed domain name to operate a website that displays the Complainant’s product names and images, likely with the intention of misleading consumers into believing the site is operated by or affiliated with the Complainant. This behavior

demonstrates a clear intent to trade off the Complainant’s rights and exploit its reputation for commercial
gain through the sale of what appear to be counterfeit goods.

Such conduct constitutes a textbook example of bad faith registration and use under paragraph 4(b)(iv) of the Policy, which applies where a domain name is used intentionally to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark. See also

WIPO Overview 3.0, section 3.1.4.

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The Panel finds that the Complainant has established this third element 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 <thefrankieshopi.shop> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: May 26, 2025