WIPO Domain Name Decision D2021-2901 for befranky.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka Case No. D2021-2901 1. The Parties

The Complainant is Franki Global Inc., United States of America (“United States” or “US”), represented by EIP US LLP, United States.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Golden Dream, The Stay Gold Co, Canada / Samantha Juraschka, United States.

2. The Domain Name and Registrar

The disputed domain name is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent a communication to the Center dated September 23, 2021, updating the registrar verification contact details. The Complainant filed an amended Complaint on September 23, 2021.

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 September 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Response was filed with the Center on October 19, 2021.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 29, 2021. 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 based in the United States which operates an online review platform that is intended to provide frank content about a variety of businesses. The Complainant owns the website “www.befranki.com” (the related domain name for which was registered on June 30, 2020) and also makes apps that are available on the principal app stores.

The Complainant is the owner of United States Registered Trademark no. 6278361 for the word mark FRANKI, registered on February 23, 2021 in Class 9 (Downloadable mobile application for providing customer-generated video reviews for local businesses and restaurants) and Class 45 (Online social networking services in the field of providing customer-generated video reviews for local businesses and restaurants). Said mark contains a first use in commerce date of February 28, 2019.

The disputed domain name was registered on January 12, 2021. The Respondent provides evidence that it uses the disputed domain name in connection with a live web application built to assist ecommerce store owners. The Respondent also provides evidence that it initially selected the domain name for its venture, by way of an application to a domain name registrar dated December 21, 2020. The Respondent indicates that such application was rejected by the country code operator concerned, after which the Respondent selected the disputed domain name.

5. Parties’ Contentions A. Complainant

The Complainant contends as follows:

Identical or confusingly similar

By virtue of its registered trademark, the Complainant prima facie satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case. UDRP panels in numerous cases have repeatedly found that companies with registered trademark rights have the right to stop entities from infringing or misusing their registered marks. The disputed domain name is confusingly similar to the Complainant’s mark based on a phonetic comparison. Previous cases under the Policy have found confusing similarity where domain names are phonetically identical or similar to the trademarks concerned.

The Respondent purchased the disputed domain name on January 12, 2021, but has only posted a landing page since that time that purports to help “turn your customers’ social content into interactive reviews” and to “convert social media content into powerful testimonials”. Other links on the Respondent’s website are blocked or inactive. The likelihood of confusion is markedly increased because the disputed domain name is a website promoting the use of social media and reviews.

Rights or legitimate interests

The Respondent has no connection or affiliation with the Complainant or any affiliate or related entity. The Respondent has no rights by contract, license or otherwise to use the Complainant’s mark or the disputed domain name. The Respondent has only one accessible page from the disputed domain name and there is little or no evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The lack of functional links for “About the Company” and “Terms and Conditions” affirms this. There are no indications that the Respondent has been commonly known by the disputed domain name or has acquired related trademark rights. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is directed towards the same or similar types of services that the Complainant provides, tending to show that the Respondent is misleadingly using the disputed domain name to divert consumers or to tarnish the Complainant’s mark. The Respondent’s use of the disputed domain name has not been bona fide, because the Respondent must have known of the Complainant’s website and apps, and its registered trademark, before using the disputed domain name for a website purporting to have a competing product. The Respondent is engaging in “typosquatting” and has no rights or legitimate interests in the disputed domain name as this does not qualify as a bona fide offering of goods or services.

Registered and used in bad faith

The Respondent registered the disputed domain name a full seven months after the Complainant purchased its domain name. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. Evidence that supports this assertion is that the domain names concerned are phonetically identical, which in itself is indicative of bad faith registration. The bad faith element is compounded by the fact that the Respondent purports to be providing services that would be or are directly competitive with services provided by the Complainant, namely a platform of frank online reviews. Previous panels have found that actions of misspelling and using a phonetically identical mark to that of a complainant may be considered an implied act of fraud (unfair competition) which is clear evidence of bad faith.

B. Respondent

The Respondent contends as follows:

Identical or confusingly similar

The Respondent registered the disputed domain name on January 12, 2021 to host a live web application built to assist ecommerce store owners. The application helps collect and save social content from online platforms and embeds it on ecommerce stores. Said application is active and used by store owners, and requires a user to sign-up on the landing page for full functionality. The Respondent has updated the application bi-monthly since January 2021. The Respondent’s terms and conditions are available in the sign-up flow to registered users of its site. Since receiving the Complaint, the Respondent has removed the inactive “About the Company” link and updated the “Terms and Conditions” link. Past cases under the Policy cited by the Complainant are not relevant as they are examples of fraud and extortion.

The present case is a mere coincidence. The Respondent registered the disputed domain name with no knowledge that the Complainant had registered its own domain name, and had no knowledge of the Complainant’s company or trademark. The Respondent could not have been aware of said trademark as it was registered more than 45 days after the disputed domain name was registered. The Respondent originally applied for the domain name on December 21, 2020 with the intention of having this as its primary address (evidence provided). The operator of the country code concerned retracted the application because domain names are restricted to five characters or more in the Cayman Islands, United Kingdom.

The Respondent does not portray itself as the Complainant or compete with the Complainant. It does not use the Complainant’s trademark and does not mimic the Complainant or mislead users that its web application is related to the Complainant. The Complainant’s web application appears to be a downloadable application to help local restaurant owners pay users for food review creation, whereas the Respondent operates an online cloud-based service built for ecommerce store owners to generate an embeddable widget to collect existing social content for display on product pages. The Complainant’s trademark contains no claim to ecommerce-only online stores and large consumer goods brands.

The term “let’s be frank” and “to be frank” are common English phrases which have inspired many domain name holders that provide honesty or truth. There are several domain name holders who also have phonetically identical or similar domain names to the Parties’, including (registered in 2013), (registered in 2005), (registered in 2019), (registered in 2013), (registered in 2018), (registered in 2018), and (registered in 2020).

The Respondent originally selected the domain name for its web application on December 21, 2020, but this was rejected by the country code operator concerned. The Respondent then searched for other “franky” domain names and the shortest available was the disputed domain name. The Respondent did due diligence but the Complainant did not appear in such exercise. The Complainant may have poor search engine optimization as it originally operated under the domain name and later switched to in July 2020. The Complainant has limited search engine appearances. The domain names which were identified in the Respondent’s due diligence related to a musical DJ operating in Europe and a domain hosting review blog.

Rights and legitimate interests

The Respondent is operating a legitimate web application with no intent to mislead or divert the Complainant’s customers and had no prior knowledge of the Complainant. The Respondent has no desire to be associated with the Complainant, which has a poor public review, an insignificant social media following (1,045 followers on “Instagram” and 83 followers on “Twitter”), and only self-published press releases. The Respondent did not engage in typosquatting and had no such intent, as demonstrated by its original application to purchase for its web application.

Registered and used in bad faith

The Parties have web applications that serve distinct markets, have distinct branding and logos, and service different customers. The Respondent has no desire to be connected with the Complainant. The cases referenced by the Complainant are irrelevant, as they describe clear examples of fraud against well-established brands that had trademarks in place for years, some involving attempts to sell the domain name concerned to the complainant for significant financial gain. The Respondent operates a legitimate web application serving a different audience, and had no way of knowing about the Complainant’s domain name based on the Complainant’s limited online presence. The Respondent has no desire to be connected with the Complainant and could not have known of its trademark when it was registered 45 days after the Respondent registered the disputed domain name.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant must show that all three of the elements set out under paragraph 4(a) of the Policy are present, namely that:

(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.

A. Identical or Confusingly Similar

Under this element of the Policy, the Panel assesses whether the Complainant has UDRP-relevant rights in a trademark. If so, the Panel then compares such mark to the disputed domain name in order to determine the question of identity or confusing similarity. If the mark is recognizable in the disputed domain name, confusing similarity will typically be found. The generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded for the comparison exercise as being required for technical purposes only.

In the present case, the Second-Level of the disputed domain name contains the Complainant’s FRANKI mark in its entirety, with the exception of the fact that the letter “i” has been substituted with the letter “y”, and that this is prefixed by the word “be”. The addition of the word “be” is of no particular significance and would not prevent a finding of confusing similarity. With regard to the difference in spelling between the Complainant’s FRANKI mark and the word “franky” in the disputed domain name, the Panel considers that this likewise would not prevent a finding of confusing similarity. The letter “y” is a common substitution for the letter “i”, and the Panel accepts the Complainant’s submissions that the words “franki” and “franky” are also phonetically equivalent.

The Respondent’s case does not address the question of the Complainant’s rights in its registered trademark or the comparison process as described above. It is not relevant to the first element assessment that the registration date of the Complainant’s trademark post-dates the registration date of the disputed domain name. This fact, along with the remainder of the Respondent’s contentions on the topic of the first element, are more relevant to the third element assessment and will be considered under that head.

In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is widely accepted among panels under the Policy that, for bad faith registration and use to be made out, a degree of targeting of the Complainant or its mark by the Respondent must be evident from the record, or at the very least that there must be sufficient grounds to infer that the Respondent had the Complainant or its trademark in mind when the disputed domain name was created (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). Accordingly, the focal point in the present case is the period from December 2020 to January 2021, when the Respondent attempted to register and thereafter registered the disputed domain name. The Complainant possessed no relevant registered trademark rights in the period concerned. The Panel must therefore consider what, if any, relevant unregistered trademark rights the Complainant might have possessed at that time.

The Complaint does not make any effort to establish that the Complainant’s FRANKI mark enjoyed any particular renown at the material time. The Complainant may have used its own domain name from the time when this was registered on June 30, 2020, but there is no substantive description of its reach with consumers, and in particular, there is nothing to suggest that in the six months or so between the registration date of the Complainant’s domain name and the disputed domain name, the Complainant had established a secondary meaning in either a mark such as BE FRANK or BE FRANKI, or in the mark FRANKI alone, as subsequently registered. The Complainant merely asserts that the first use in commerce of its FRANKI trademark is dated February 28, 2019, and that the Respondent must have been targeting it due to the similarity between the disputed domain name and the Complainant’s own domain name.

As was noted in Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,WIPO Case No. D2009-1033, the date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced. Absent additional supporting evidence, which is lacking on the present record, the Panel is not prepared to find that the Complainant had unregistered trademark rights in a relevant trademark at the material time. The Panel bears in mind the fact that the Respondent casts further doubt on the renown of the Complainant’s mark by pointing out that the Complainant maintains a limited presence on social media and no significant presence by way of search engine optimization, such that the Respondent might reasonably have identified the Complainant in the due diligence which it says that it carried out prior to registering the disputed domain name.

To be sure, the disputed domain name does bear a distinct similarity to the Complainant’s domain name . The Panel asks itself whether that similarity alone is enough to make out the Complainant’s case on registration in bad faith, and determines that it does not, particularly when the domain name concerned was only registered just over six months earlier and the Complainant has been unable to establish a secondary meaning in a relevant term at the material time. The Respondent’s case, while not wholly compelling, is reasonably plausible. The Respondent submits that the similarity in the Parties’ domain names is a mere coincidence and shows that the term “franky”, in various spellings, appears to have some currency on the Internet as a generic signpost to the presence of online reviews. There is no particular reason to believe that the term “befranky” in the disputed domain name is anything other than a play on the phrase “be frank”, calling to mind the social media reviews which the Respondent’s system makes available to ecommerce operators. On the basis of the present record, this is not a case where the disputed domain name has significance only because it contains a version of the Complainant’s trademark. The Panel has no reason to disbelieve the Respondent’s submissions as to the reason why it chose the term “franky” in the context of software to facilitate publication of online reviews. The Respondent goes on to show with screenshots that it has built software code for the purpose it describes, albeit that this is lacking in dated evidence which ought to have been available, for example, from a code repository. Nevertheless, the material produced by the Respondent does go some way towards suggesting that it is not engaged in mere pretextual cybersquatting.

In conclusion on this topic, the burden of proof rests upon the Complainant and the Complainant has failed to prove that the Respondent more probably than not had any knowledge of the Complainant, or any rights of the Complainant in mind, when it registered the disputed domain name. The Respondent’s assertion that it carried out due diligence at the material time but did not find anything relating to the Complainant or its rights does not appear to be implausible. In all of these circumstances, the Panel finds that the Complainant has not carried its burden in terms of paragraph 4(a)(iii) of the Policy and the Complaint therefore fails.

The fact that the Complainant has not proved registration and use in bad faith in terms of the Policy means only that the Complainant does not have a remedy by way of this administrative proceeding. Neither of the Parties should regard the present determination as a finding of whether or not the Respondent is infringing the Complainant’s registered trademark, and such determination does not mean that the Complainant could not seek to pursue a trademark infringement action against the Respondent in a suitable forum should it choose to do so. With that in mind, the Panel notes that it entertains no notion of what may be done with the present Decision after the Panel is functus officio, and does not address this to the attention of any other forum.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: December 13, 2021

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