Frankie Shop LLC v Ralph Moran

WIPO Case No. D2025-0126

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Frankie Shop LLC v. Ralph Moran

Case No. D2025-0126

1. The Parties

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

Avocats, France.

Respondent is Ralph Moran, United States.

2. The Domain Name and Registrar

The disputed domain name <euhefrankieshop.top> (hereinafter “Disputed Domain Name”) is registered with

Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2025.
On January 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On January 15, 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) and contact information in the Complaint.
The Center sent an email communication to Complainant on January 16, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the

Complaint. Complainant filed an amendment to the Complaint on January 17, 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2025. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on February 10, 2025.

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The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 14, 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

Complainant sells clothing, accessories (leather goods, jewelry, etc.), women's shoes, and cosmetics under the trademark THE FRANKIE SHOP (hereinafter the “Mark”) via the website associated with its domain name <thefrankieshop.com>, which Complainant registered on September 17, 2014.

Complainant sells its products in many jurisdictions around the world and, accordingly, has secured ownership of multiple trademark registrations for the Mark, including:

- International Trademark Registration Number 1648994, registered on October 12, 2021, designating many jursidictions, including, for example, Australia, European Union, Brazil, and the United States;

- French Trademark Registration Number 4762800, registered effective May 4, 2021.

In addition, the founder and Director of Complainant, owns United States Trademark Registration Number

5,147,070 registered February 21, 2017, for FRANKIE SHOP

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Disputed Domain Name.

Notably, Complainant offers evidence that Respondent has copied product images from Complainant’s
website and purports to offer these products at discounted prices, such as “60%”. Complainant alleges that
Respondent sells counterfeit products.

Complainant also contends that it is well known among likely consumers. Complainant supports this claim with a copy of an article in Vogue Magazine entitled “How the Frankie Shop Became The Brand Editors Can’t Live Without” discussing Complainant’s popularity in the fashion world. The article observes that: “Chances are you’ve never heard of the designer […] You will, however, have heard of The Frankie Shop.”

B. Respondent

Respondent did not file an answer to the Complaint.

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
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.

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.

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The Panel finds the Mark is recognizable within the Disputed Domain Name. Neither the addition of the
geographical term “eu”, nor the omission of the “t” in “the” prevents 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.
Accordingly, the Disputed Domain Name is confusingly similar to the Mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7. See also WIPO Overview 3.0, section 1.9.

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 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 Complainant has established a prima facie case that 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.

Complainant offers evidence that Respondent has copied product images from Complainant’s website and purports to offer these products at discounted prices. Use of a domain name to impersonate Complainant and pass off unauthorized products as authentic can never confer rights or legitimate interests on a

respondent. WIPO Overview 3.0, section 2.13.1.

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.

The Panel finds that Respondent registered the Disputed Domain Name in bad faith. The Vogue magazine evidence supports the Panel’s finding, based on the balance of probabilities, that Complainant is well-known and that Respondent was aware of Complainant’s rights when he registered the Disputed Domain Name. In addition, the evidence that Respondent copied images from Complainant’s website supports the Panel’s

finding that Respondent targeted Complainant when he registered the Disputed Domain Name.

The same evidence supports a finding of bad faith use of the Disputed Domain Name. Panels have held that the use of a domain name to impersonate Complainant constitutes bad faith use under the Policy.

The Panel finds that 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 <euhefrankieshop.top> be transferred to Complainant.

/Lawrence K. Nodine/
Lawrence K. Nodine
Sole Panelist
Date: February 28, 2025