Frankie Shop LLC v Ibrahim Keck

WIPO Case No. D2025-1521

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Frankie Shop LLC v. Ibrahim Keck

Case No. D2025-1521

1. The Parties

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

France.

The Respondent is Ibrahim Keck, de de, Germany.

2. The Domain Name and Registrar

The disputed domain name <thefrankieshopde.com> (the “Disputed Domain Name”) is registered with

Hongkong Kouming International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2025. On April 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 23, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 in Chinese and English of the Complaint, and the proceedings commenced on April 29, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2025. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on May 22, 2025.

The Center appointed Rosita Li as the sole panelist in this matter on May 27, 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.

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4. Factual Background

The Complainant is a company incorporated in the State of New York, US, specialized in the sale of clothing, websites “ and “

accessories (leather goods, jewelry, etc.), women’s shoes, cosmetics under the brand name THE FRANKIE
SHOP and under third-party brands in countries or regions such as New Zealand, the United Kingdom
(“UK”), the European Union (“EU”), Canada, Switzerland, Australia, South Africa, United Arab Emirates,

The Complainant is the owner of trademark registrations for THE FRANKIE SHOP throughout the world, including but not limited to the following:

1) International Registration No. 1648994 for THE FRANKIE SHOP registered on October 12, 2021

designating, among others, EU, Brazil, Mexico, China, Singapore, Republic of Korea, Japan, Malaysia, New
Zealand, Türkiye, Ukraine, Switzerland, and UK;

2)        French Registration No. 4762800 for THE FRANKIE SHOP registered on May 4, 2021;

3)        US Registration No. 7028712 for THE FRANKIE SHOP registered on April 18, 2023;

4)        French Registration No. 4763092 for TFS (figurative) registered on May 4, 2021; and

5)        International Registration No. 1730697 for TFS (figurative) registered on December 5, 2022

(collectively, the “THE FRANKIE SHOP Trademarks”).

The Complainant also owns several domain names which contain THE FRANKIE SHOP Trademarks, the word “Frankie”, or the words “Frankie Shop”, including <thefrankieshop.com>, created on September 17, 2014.

The Disputed Domain Name was registered by the Respondent on November 29, 2024.

As of the date of filing this Complaint, the Disputed Domain Name resolved to a website prominently displaying THE FRANKIE SHOP Trademarks and purportedly offering for sale the Complainant’s goods.

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. A summary of the Complainant’s submission is as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that:

- The Complainant is the owner of THE FRANKIE SHOP Trademarks;

- THE FRANKIE SHOP and FRANKIE SHOP are also used by the Complainant as part of the company

name since 2015 and 2017, namely in relation to Frankie Shop LLC registered with New York State
Department of State, US since May 4, 2015, and The Frankie Shop Paris registered with Paris Trade and
Companies Register, France since February 10, 2017;

- THE FRANKIE SHOP Trademarks are known worldwide and enjoy a high reputation, featured in major magazines such as Vogue and Forbes, and followed by over a million followers on Instagram;

- The Disputed Domain Name reproduces the words “the”, “Frankie”, and “Shop” of the Complainant’s

THE FRANKIE SHOP Trademarks, differing only by the addition of a geographical term “de”, which refers to assessing confusion;

- The word “Frankie” has no meaning in either English or French, and thus the Disputed Domain Name incorporates the distinctive terms of the Complainant’s THE FRANKIE SHOP Trademarks;

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- The addition of a geographical term does not avoid the likelihood of confusion between the Disputed Domain Name and THE FRANKIE SHOP Trademarks; and

- The Respondent cannot credibly claim accidental or coincidental registration since the Disputed

Domain Name is highly similar to the prior rights of the Complainant, and directs to a website that reproduces the Complainant’s THE FRANKIE SHOP Trademarks and purportedly sells the Complainant’s goods for commercial gain.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant contends that:

- The Respondent has no rights in the term “The Frankie Shop” and has never acquired any prior rights

on this term;

- The Respondent is not affiliated with the Complainant and has not been authorized by the

Complainant to use its THE FRANKIE SHOP Trademarks or to proceed with the registration of the Disputed

Domain Name incorporating the Complainant’s THE FRANKIE SHOP Trademarks;

- The Respondent is neither a licensee nor a third party authorized to use THE FRANKIE SHOP

Trademarks, including as a domain name;

- The Complainant does not know the Respondent and has never had any relationship with it;

- The reproduction of the Complainant’s THE FRANKIE SHOP Trademarks reveals a malicious intention to take advantage of the notoriety of the Complainant’s THE FRANKIE SHOP Trademarks;

- The Disputed Domain Name directs to a website that reproduces the Complainant’s THE FRANKIE

SHOP Trademarks as well as the name of the Complainant’s products and photographs of its products and models; and

- The Disputed Domain Name directs to a website that offers counterfeit products at very substantially

discounted prices.

(iii)      The Disputed Domain Name was registered and is being used in bad faith. The Complainant

contends that:

- The Complainant is the owner of numerous trademarks and domain names composed of the name

“The Frankie Shop”, demonstrating both its rights and worldwide reputation attached to THE FRANKIE
SHOP Trademarks;

- The Respondent has neither the rights nor legitimate interests in the Disputed Domain Name and its registration was made in bad faith;
- The Respondent could not have been unaware of the Complainant’s prior rights since the Disputed
Domain Name reproduces the Complainant’s prior THE FRANKIE SHOP Trademarks, and the only
difference being the addition of a geographical term “de”, which is not sufficient to distinguish the Disputed
Domain Name with THE FRANKIE SHOP Trademarks;

- The Respondent reproduces the Complainant’s prior THE FRANKIE SHOP Trademarks, as well as photographs and names of the Complainant’s products;
- The Complainant’s THE FRANKIE SHOP Trademarks have a significant reputation in the world, and predate the registration of the Disputed Domain Name;

- The Respondent had the Complainant’s prior rights in mind at the time of registration; and

- The Disputed Domain Name directs to a website that offers counterfeit of the Complainant’s products at very substantially discounted prices, with a view to commercial gain.

B. Respondent

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

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6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons, including the following:

1)        The Complainant is a US entity and its primary language of communication is English;

2)        English is widely used in international relations and is one of the Center’s working languages;

3) The Disputed Domain Name is comprised of Latin characters, suggesting the Respondent’s familiarity with European languages;

4)        The Disputed Domain Name directs users to a website with content in German, and English is a

widely used language in Germany; and

5) The Complainant is unable to communicate in Chinese, and the translation of the Complaint would

lead to undue burden being placed on the Complainant (such as incurring translation expenses), and delay
the proceedings and adjudication of the matter.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above and the fact that:

(i)        The Disputed Domain Name is registered in Latin script rather than Chinese script;

(ii) Even though the Center has used English and Chinese in the relevant correspondences with the Parties, the Respondent has not filed any formal response and did not comment on the language of the proceeding; and

(iii)      Translating the Complaint will result in considerable costs to the Complainant.

The Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be

English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must satisfy each of the following three elements in a complaint:

(i) the disputed domain name 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 disputed domain name; and

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

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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 3.0, section 1.7.

Based on the available materials, the Panel finds 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 that the entirety of THE FRANKIE SHOP Trademarks is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to THE FRANKIE SHOP Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the term “de” 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 FRANKIE SHOP Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available materials, 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.

Having reviewed the available materials, 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.

In accordance with WIPO Overview 3.0, section 2.5.1, where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Based on the available materials, the website resolved under the Disputed Domain Name displayed references to THE FRANKIE SHOP Trademarks. Further, the Disputed Domain Name includes the Complainant’s THE FRANKIE SHOP Trademarks in its entirety, and the additional term “de”, which is the country code for Germany, would readily be interpreted as indicating that the website resolved under the Disputed Domain Name serves as the official online website for the Complainant’s operations in Germany.

Panels have held that the use of a domain name for illegal activity, where the Respondent claimed impersonation as the Complainant, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. By prominently displaying THE FRANKIE SHOP Trademarks and

using the names and images of the Complainant’s official products and images of models on the website
resolved under the Disputed Domain Name, the Respondent falsely associated itself with the Complainant

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and/or impersonated the Complainant. Using the Complainant’s well-recognized THE FRANKIE SHOP thereof, the Disputed Domain Name is free-riding on the reputation of the Complainant and creating a false impression that the Respondent may be associated with the Complainant.

Given the above, the Panel finds it apparent that the Respondent has the intention to divert consumers seeking to find the Complainant, or to tarnish the Complainant’s THE FRANKIE SHOP Trademarks. It is clear that the use of the Disputed Domain Name, which incorporates THE FRANKIE SHOP Trademarks in its entirety, is an attempt by the Respondent to capitalize on the goodwill and reputation of THE FRANKIE SHOP Trademarks, which the Panel does not consider to be a legitimate noncommercial or fair use of the Disputed Domain Name nor a bona fide offering of goods or services.

Based on the available materials, 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 Panel notes that the Respondent’s registration of the Disputed Domain Name incorporates THE FRANKIE SHOP Trademarks in its entirety. The Panel also notes that the time of registration of the Disputed Domain Name on November 29, 2024 is well after the application and/or registration of the Complainant’s THE FRANKIE SHOP Trademarks. The Complainant has provided

supporting documents to show that THE FRANKIE SHOP Trademarks are well known and reputable
amongst the general public, including evidence of features of the Complainant in major magazines such as
Vogue and Forbes, as well as evidence of over a million followers on Instagram. The Panel accepts that
the Complainant has been continuously using THE FRANKIE SHOP Trademarks and finds that it would not
be plausible for the Respondent to claim that it was unaware of the Complainant and THE FRANKIE SHOP
Trademarks, particularly considering the use of THE FRANKIE SHOP Trademarks on the website at the
Disputed Domain Name. The Panel is prepared to find that the Respondent knew that the registration of
the Disputed Domain Name would be confusingly similar to THE FRANKIE SHOP Trademarks.
WIPO Overview 3.0, section 3.2.2. Accordingly, the Panel finds that the Respondent’s registration of the
Disputed Domain Name, which is confusingly similar to the well-known and earlier registered THE FRANKIE
SHOP Trademarks, is a clear indication of bad faith.

In accordance with paragraph 4(b)(iv) of the Policy, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s THE FRANKIE SHOP Trademarks as to source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location, which is an indicator of bad faith on the part of the Respondent. With no response from the Respondent, the Panel is prepared to find that the Disputed Domain Name resolves to a website potentially selling counterfeit imitations of the Complainant’s products with a view to commercial gain, particularly given the substantially discounted prices. In view of this, the Panel is of the view that the Respondent has registered and used the Disputed Domain Name in bad faith.

Based on the available materials, the Panel finds that the Complainant has established the third element of the Policy.

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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 <thefrankieshopde.com> be transferred to the Complainant.

/Rosita Li/
Rosita Li
Sole Panelist
Date: June 9, 2025