Complainant is The Frankie Shop LLC, United States of America (“United States”), represented by Coblence & Associés, France.
Respondent is Austin Hart, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 27, 2021 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 October 27, 2021.
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 November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. On November 19, 2021, an extension of four days was granted pursuant to Rules, paragraph 5(b). The new deadline for the Response was set to November 27, 2021. A partially completed Response was filed late with the Center on November 30, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 9, 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 BackgroundComplainant is The Franke Shop, a limited liability company registered in New York State in May 2015, with its principal place of business located in the City of New York. Complainant specializes in the marketing of clothes, bags, cosmetics and jewelry. The company, The Frankie Shop Paris, is registered with the Paris Trade and Companies Register since February 10, 2017.
Complainant owns the following trademarks:
(i) French trademark THE FRANKIE SHOP, no.4762800, registered on May 4, 2021 in classes 03, 04, 09, 14, 18, 25 and 35;
(ii) United States trademark FRANKIE SHOP, no. 5147070, filed on October 7, 2014 and registered on February 21, 2017 in class 35.
Complainant has also filed the following trademark application:
(i) United States trademark application THE FRANKIE SHOP, no. 97050056, filed on September 28, 2021 in class 35.
Ms. Gaelle Drevet, the director of The Frankie Shop (the “Director”), is the owner of the following trademarks:
(i) French trademark FRANKIE SHOP, no. 4338335 registered on June 9, 2017 in classes 03, 04, 09, 14, 16, 18 and 25;
Complainant owns the domain name
The Domain Name was registered on September 23, 2021. Respondent is located in Brooklyn, New York in the United States.
5. Parties’ Contentions A. Complainant(i) Identical or confusingly similar
Complainant has submitted evidence to show that THE FRANKIE SHOP enjoys a high reputation in the fashion industry throughout the world, and has been featured in major magazines such as Vogue and Forbes. Moreover, Complainant sells its products all over the world.
Complainant asserts that there is confusing similarity between its trademarks and the Domain Name. The Domain Name is composed of an exact reproduction of the two words “frankie” and “shop” in the trademarks of Complainant and its Director. The sole differences between the prior trademarks of Complainant and its Director and the Domain Name are (i) the addition of the top-level domain suffix “.com”, which should be regarded as irrelevant; (ii) the addition of a hyphen between the words “shop” and “frankie”; (iii) the inversion of the words “frankie” and “shop”; and (iv) the absence of the word “the” as compared to Complainant’s THE FRANKIE SHOP mark.
Complainant submits that the hyphen in the Domain Name is of negligible significance when applying the test for confusing similarity. Further, the inversion of the words “frankie” and “shop” does not change the overall impression, and the absence of the word “the” regarding Complainant’s THE FRANKIE SHOP mark, is not sufficient to avoid any likelihood of confusion, as these words are not distinctive. Consequently, Complainant maintains that the Domain Name is confusingly similar to the trademarks THE FRANKIE SHOP and FRANKIE SHOP.
Complainant contends it is obvious that Respondent merely copied the trademarks and domain name of Complainant and its Director. Complainant states Respondent cannot credibly claim that it had just accidentally or by coincidence chose a domain name that is confusingly similar to the prior rights owned by Complainant and its Director and which have been registered and used for several years. Complainant urges that anyone who sees the Domain Name is bound to mistake it for a name related to the prior rights of Complainant and its Director and this could deceive Complainant’s customer base. The likelihood of confusion includes an obvious association with the trademarks of Complainant and its Director.
In sum, the Domain Name and the prior trademarks of Complainant and its Director are confusingly similar. In this regard, Complainant submits that the first element required by the Policy is satisfied.
(ii) Rights or legitimate interests
Complainant contends that Respondent has neither rights nor legitimate interests in respect of the Domain Name. To Complainant’s knowledge, Respondent has never registered SHOP-FRANKIE, THE FRANKIE SHOP or FRANKIE SHOP as trademarks and has never acquired any common law rights for these terms. Hence, Respondent has no right in and to the Domain Name.
Moreover, Complainant and its Director have neither authorized nor licensed Respondent to use or exploit their prior trademarks, to register the Domain Name, or to associate with Complainant. Complainant does not know Respondent, nor has it ever been in relationship with Respondent. Therefore, it is obvious that Respondent has no rights in respect of the Domain Name and is using it in order to divert Complainant’s customers.
Complainant claims that by registering the Domain Name to redirect to a website that seems to be under construction or to be held in a passive way, and by using the distinctive term “frankie” on that site (corresponding to Complainant’s and the Director’s trademarks), Respondent clearly intends to take advantage of the use of a Domain Name whose resemblance to Complainant’s and its Director’s prior trademarks is confusing. Moreover, Complainant states that although the site linked to the Domain Name shows pictures of animals and has sections with animal names, it appears that no products are offered for sale, which seems doubtful. Since this use of the Domain Name was not authorized by Complainant, it cannot be the basis for a bona fide use of the Domain Name. In any case, Complainant states that Respondent has not made a legitimate, noncommercial or fair use of the Domain Name because Respondent is only attempting to create confusion in the public mind. Complainant concludes that Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) Registered and used in bad faith
Complainant states that by registering and using the trademarks THE FRANKIE SHOP and FRANKIE SHOP, as well as the domain name
Complainant states the Domain Name was registered and is being used in bad faith. Bad faith can be found where Respondent knew or should have known of Complainant’s and the Director’s trademark rights, and nevertheless registered the Domain Name in which Respondent had no rights or legitimate interests. It is implausible that Respondent was unaware of Complainant when registering the Domain Name. Firstly, Complainant enjoys a high reputation in the fashion industry around the world. Secondly, the composition of the Domain Name imitating Complainant and its Director’s prior trademarks strongly suggest that Respondent had these trademarks in mind when registering the Domain Name. Thirdly, Complainant’s THE FRANKIE SHOP trademark and the Director’s the FRANKIE SHOP trademark significantly predate the registration date of the Domain Name. Thus, Complainant concludes the Domain Name was registered in bad faith with the intent to benefit from or harm Complainant’s reputation.
Complainant submits that by registering the Domain Name to redirect to a website that seems to be under construction or to be held in a passive way and on which the distinctive term “frankie” appears from Complainant’s and the Director’s marks, Respondent clearly intends to take advantage of the use of the Domain Name whose resemblance to Complainant and the Director’s trademarks THE FRANKIE SHOP and FRANKIE SHOP is confusing. Respondent notes that the website at the Domain Name is almost an empty site except for pictures of animals and sections with animal’s names; it appears to be under construction or passively held in a doubtful manner.
Moreover, due to the high reputation of Complainant in the fashion industry, Complainant emphasizes it is obvious that Respondent had Complainant and its Director’s prior trademarks in mind when registering and using the Domain Name. Therefore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the Domain Name resolves, by creating a likelihood of confusion with Complainant’s and its Director’s trademarks. This all supports the conclusion that the Domain Name was registered and is being used in bad faith.
B. RespondentRespondent’s late-filed Response appears to be incomplete, as Respondent stated in it only that: (i) “I purchased this domain from [the Registrar] of which they informed me that the domain was not purchased by any other occupant of the domain. When looking at the domain, it was unused prior to my purchase of the domain”, and that (ii) “I will be keeping the domain as is, as it was purchased fairly through a reputable domain purchasing site”. It is within the Panel’s discretion whether or not to consider Respondent’s late-filed Response. The Panel determines that it will consider this submission, although noting that it does not attempt to rebut Complainant’s allegations.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel finds that Complainant and its Director have demonstrated that they have well-established rights in their THE FRANKIE SHOP and FRANKIE SHOP trademarks, both through registration and use. The Panel further finds that the Domain Name incorporates the terms “frankie” and “shop” from each of these marks, while inverting the order and connecting these terms with a hyphen. These changes (and the omission of the word “the”) in the Domain Name do not prevent the trademarks of Complainant and its Director from being recognizable in the Domain Name. See e.g., Giorgio Armani S.p.a. Milan Swiss Branch Mendrisio v. Lin jinqing,WIPO Case No. D2012-1412 (concerning the domain name
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsRegarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to respond to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use the THE FRANKIE SHOP and FRANKIE SHOP trademarks and that there is no evidence that Respondent is commonly known by the Domain Name. The Domain Name is comprised of the hyphenated terms “shop-frankie”, which appears to be an unusual combination and a reference to the marks THE FRANKIE SHOP and FRANKIE SHOP owned by Complainant and its Director, as the two key terms from those marks are inverted in the Domain Name. Respondent has not attempted to justify this formulation in the Domain Name. Further, Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name is linked to a website that appears to be under construction, with pictures of animals on several of the pages, and placeholders for other possible products for sale on other pages, and with the word “frankie” appearing on each page. See example below:
The Panel can see no apparent self-evident link between the pictures of animals or the other product placeholders and the Domain Name or the term “frankie” on the website pages linked to the Domain Name. Moreover, the Panel observes that Respondent is located in Brooklyn, one of the five boroughs of New York City where Complainant’s business is located, and Respondent, in the face of the Complaint, has not attempted to justify why he registered the Domain Name.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Complainant has provided evidence of the strong reputation and goodwill associated with the trademarks THE FRANKIE SHOP and FRANKIE SHOP, particularly in the world of fashion. Further, as noted above, Respondent is located in the same city where Complainant’s business is located, and Respondent has not attempted to explain the unusual formulation of the hyphenated terms “shop-frankie” in the Domain Name, which reflect an inverted ordering of the two key terms in the trademarks of Complainant and its Director. On the facts of this case, where Respondent has failed to respond to the Complainant’s contentions and where Respondent’s partially developed website appears to be a placeholder for potentially selling various products in the future, some of which might compete with Complainant’s offerings, the Panel determines, on the balance of the probabilities, that Respondent when registering the Domain Name, was likely aware of Complainant’s and its Director’s trademarks, and intentionally targeted them, when registering the Domain Name.
Moreover, the evidence indicates that Respondent may have been preparing to use the Domain Name for a website selling products, possibly some of which would compete with Complainant’s offerings. Again, taking into account the reputation of the trademarks THE FRANKIE SHOP and FRANKIE SHOP and the inverted presentation of the two key terms from those marks in the Domain Name, the Panel is led to an inference that the choice of words in the Domain Name was not by accident, and that by means of the Domain Name, Respondent may have been preparing to intentionally attempt to attract, for commercial gain, Internet users to the website to which the Domain Name resolves, by creating a likelihood of confusion with Complainant’s and its Director’s trademarks. Respondent had an opportunity to respond to the Complainant’s contentions and explain its choice of the Domain Name and any plans for its use, but failed to do so.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Christopher S. Gibson
Sole Panelist
Date: January 16, 2022