Frankie Shop LLC v DU DU

WIPO Case No. D2025-1652

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Frankie Shop LLC v. DU DU

Case No. D2025-1652

1. The Parties

The Complainant is Frankie Shop LLC, United States of America, represented by Coblence Avocats, France.

The Respondent is DU DU, China.

2. The Domain Name and Registrar

The disputed domain name <thefrankie.shop> 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 April 24, 2025.
On April 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 25, 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 (“Arizona, US”) and contact information in the Complaint. The
Center sent an email communication to the Complainant on April 28, 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 29, 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 30, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2025.

The Center appointed Jeremy Speres as the sole panelist in this matter on May 23, 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.

page 2

4. Factual Background

The Complainant, a fashion retailer specializing in clothing, related accessories, women’s shoes and cosmetics, has been trading under the mark THE FRANKIE SHOP since 2014. Its mark has been recognized as being well known by prior panels under the Policy. See, e.g., Frankie Shop LLC v. Finlay Foster, Eric Naumann, and Emma Fry, WIPO Case No. D2024-1993.

The Complainant’s primary website is hosted at its domain name <thefrankieshop.com>, which was registered in 2014. The Complainant’s mark is registered in various jurisdictions, including International Trademark Registration No. 1648994 THE FRANKIE SHOP in classes 03, 04, 09, 14, 18, 25, and 35, having a registration date of October 12, 2021, designating China, amongst other jurisdictions.

The disputed domain name was registered on February 17, 2025, and currently resolves to a Registrar parking page offering the disputed domain name for sale for USD 999.

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 was registered and has been used in bad faith for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

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

The Panel finds the mark is recognizable 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. Where the applicable Top-Level Domain (“TLD”) and the second-level portion of a domain name in combination contain the relevant trademark, as in this case, panels may consider the domain name in its entirety for purposes of assessing confusing similarity. WIPO Overview 3.0, section 1.11.3. Here, the disputed domain name viewed in its entirety, including the TLD, is virtually identical to the Complainant’s registered mark, apart from the dot.

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

page 3

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.

For the reasons discussed in relation to bad faith below, it is likely that the Respondent’s intentions were to sell the disputed domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs due to its similarity with the Complainant’s mark. This cannot confer rights or legitimate interests. Sistema de Ensino Poliedro Vestibulares Ltda., Editora Poliedro Ltda. v. Anonymize, Inc. / STANLEY PACE, WIPO Case No. D2022-1981.

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.

For the reasons set out below, the Panel considers that it is likely that the disputed domain name was registered and has been used in bad faith for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, falling within paragraph 4(b)(i) of the Policy.

Panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely known trademark, as in this case, by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. As discussed above, prior panels under the Policy have

recognised the repute of the Complainant’s mark, and the disputed domain name is virtually identical to the registration of the disputed domain name.

Internet searches for the Complainant’s mark THE FRANKIE SHOP, which also comprises the entirety of the disputed domain name besides the dot, return results exclusively relating to the Complainant across the first few pages of search results. The Complainant’s mark viewed as a whole in the form of THE FRANKIE

SHOP is also inherently distinctive, and it is less likely, as a result, that the Respondent registered the
disputed domain name coincidentally for some other, good faith purpose not targeting the Complainant.
Accordingly, it is appropriate to infer that the Respondent either knew or should have known that the
disputed domain name would be confusingly similar to the Complainant’s mark. WIPO Overview 3.0, section
3.2.2.

page 4

The sale price of the disputed domain name is, without any evidence to the contrary from the Respondent, likely in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Additionally, on March 22, 2025, somebody named “Jack” contacted the Complainant’s brand protection vendor, offering to sell the disputed domain name for USD 2,980. Although the email address and name used by the sender were different to those of the Respondent, given that that communication was sent a little over a month after the disputed domain name was registered by the Respondent, there is a real possibility that “Jack” is associated with the Respondent, especially given the lack of any Response from the Respondent. It is also likely that the sender of that communication had the Complainant in mind for purchasing the disputed domain name, given the uniqueness and reputation of the Complainant’s mark and given that the recipient is the Complainant’s online brand protection vendor. Why else contact that vendor specifically?

The Panel draws an adverse inference from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for. WIPO Overview 3.0, section 4.3.

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 <thefrankie.shop> be transferred to the Complainant.

/Jeremy Speres/
Jeremy Speres
Sole Panelist
Date: May 30, 2025