Case Number:JP2025-0004

PANEL DECISION

1. The Parties

Complainant:

Name: FRANKIE SHOP LLC
Domicile: [Contact details omitted] New York, NY 10002, United States of America (“United States”)

Registrant:

Name: TAY MENG YEONG
Domicile: [Contact details omitted] Singapore

2. The Disputed Domain Name

The disputed domain name is <thefrankieshop.jp>.

3. Procedural History

As indicated in the Annex attached.

4. Factual Background

The Complainant is a limited liability company registered with New York, United States since May 4, 2015, specialized in the sale of clothing, accessories (leather goods, jewelry, etc.), women's shoes, cosmetics under the brand name “THE FRANKIE SHOP” and under third party brands across the world including notably Japan, New Zealand, the United Kingdom, the European Union, Canada, Switzerland, Australia, South-Africa, United Arab Emirates, Israel, Turkey, Brazil, Argentina, Kuwait, Chile, Peru, Mexico, Colombia, and Uruguay.

The Complainant notably owns the word trademarks THE FRANKIE SHOP (“THE FRANKIE SHOP Trademarks”) worldwide including (1) International trademark No. 1648994, designating Japan, Australia, European Union, Brazil, United States, Mexico, China, Singapore, Republic of Korea, Malaysia, New Zealand, Russia, Turkey, Ukraine, Switzerland and United Kingdom, registered on October 12, 2021 in classes 03, 04, 09, 14, 18, 25 and 35, (2) French trademark No. 4762800, filed on May 4, 2021 and registered on August 9, 2024 in classes 03, 04, 09, 14, 18, 25 and 35, and (3) United States trademark No. 7028712, filed on September 28, 2021 and registered on April 18, 2023 in class 35.

The Complainant owns the registrations for numerous domain names that incorporate THE FRANKIE SHOP Trademarks including <thefrankieshop.com>, <thefrankieshop.ch>, <thefrankieshop.us>, <the-frankie-shop.us>, <the-frankie-shop.co.uk>, <thefrankieshop.fr>, <thefrankieshop.uk>, <thefrankieshop.paris>, <the-frankie-shop.com> and <thefrankieshop.nyc>.

The Registrant registered the disputed domain name <thefrankieshop.jp> on July 11, 2024. The disputed domain name resolves to a parking page that contains a number of sponsored links and that offered the sales of the disputing domain name for the high amount of 4,000 Euros.

5. Parties' Contentions

A. Complainant

The Complainant's contentions may be summarized as follows:

The disputed domain name is composed of an exact reproduction of the three words “THE”, “FRANKIE” and “SHOP” included in the Complainant's THE FRANKIE SHOP Trademarks. The disputed domain name differs from the Complainant's THE FRANKIE SHOP Trademarks only by the addition of the country code Top-Level Domain (“ccTLD”) “.jp”. It should be noted that the sole addition of the ccTLD “.jp” is irrelevant and cannot be taken into consideration in determining whether there is a confusingly similarity.

To the Complainant's knowledge, the Registrant has no rights in the name “THE FRANKIE SHOP” and has never acquired any prior rights on this wording. Furthermore, the Registrant is in no way 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 domain name including the Complainant's THE FRANKIE SHOP Trademarks. The Registrant 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 Registrant and has never had any relationship with it.

The Complainant's worldwide reputation attached to THE FRANKIE SHOP Trademarks. The Registrant could not have been unaware of the Complainant's THE FRANKIE SHOP Trademarks when it registered the disputed domain name. In addition, if the registration of a domain name incorporating a trademark knowingly should be considered as carried out in bad faith, the notoriety of the reproduced trademark is a clear indication of bad faith rightly. It is obvious that the Registrant deliberately registered the disputed domain name quasi-identical to the Complainant's THE FRANKIE SHOP Trademarks with the intent to divert Internet users from the Complainant's website to the Registrant's parking page which contains sponsored links and for the purpose of selling as it is also stated on the page that the disputed domain name is for sale for the sum of 4,000 Euros, which further reinforces the bad faith use.

B. Registrant

The Registrant did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

Article 11 (a) of the Rules for JP Domain Name Dispute Resolution Policy (the “Rules”) provides, “The language of the Proceedings shall be Japanese, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the proceeding”.

However, the Complainant requests to change the language of the proceeding from Japanese to English with several reasons including that the Complainant is an entity in the United States and English is the main language of communication for the Complainant; the Registrant is located in Singapore, where English is one of the official languages; English language is the language the most widely used in international relations; the disputed domain name has been registered in Latin, rather than Japanese script, which indicates a familiarity on the part of the Registrant with European languages; the disputed domain name contains the English terms “the” and “shop”; and requiring the Complainant to submit documents in Japanese would lead to delay and cause the Complainant to incur translation expenses.

Considering the circumstances of the proceeding, including that the Registrant is located in Singapore, where English is commonly spoken, and the Registrant did not object to the Complainant's request to change the language of the proceeding from Japanese to English, the necessity for conducting the proceeding in Japanese will not be so critical to justify the delay and translation costs. Thus, the Panel determines to proceed and render its decision in English.

6.2 Substantive Elements of the Policy

In accordance with Article 4(a) of the JP Domain Name Dispute Resolution Policy (the “Policy”), the Complainant must assert and prove the following three elements are present.

1. The domain name of the Registrant is identical or confusingly similar to any mark such as trademark or service mark in which the Complainant has rights or legitimate interests; and
2. The Registrant has no relevant rights or legitimate interests in respect of the domain name; and
3. The domain name of the Registrant has been registered or is being used in bad faith (unfair purpose).

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.

The Panel confirms that the Complainant registered several THE FRANKIE SHOP Trademarks. The disputed domain name consists of the Complainant's THE FRANKIE SHOP Trademarks in its entirety without spaces between the words plus a ccTLD “.jp”.

Numerous JP-DRP and UDRP panels have recognized that the Top-Level Domain may be disregarded under the first requirement of confusing similarity test as a standard registration requirement of the domain name (see Frankie Shop LLC v. Linda Barnes, WIPO Case No. D2023-3816 <thefrankieshop.shop>).

Accordingly, the Panel finds that the first element in Article 4(a) of the Policy has been established.

B. Rights or Legitimate Interests

Article 4(c) of the Policy provides a list of circumstances in which the Registrant may demonstrate rights or legitimate interests in a disputed domain name.

As the Complainant asserts, the Registrant is not affiliated or related to the Complainant, or licensed or otherwise authorized to use THE FRANKIE SHOP Trademarks including as a domainname. The Registrant is not commonly known by the disputed domain name (see Article 4(c)(ii) of the Policy) and has not acquired any trademark or service mark rights in the disputed domain name.

The Registrant is using the disputed domain name to operate a parking page that contains a number of sponsored links but the Registrant is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain (see Article 4(c)(iii) of the Policy).

Although the overall burden of proof in the proceedings is on the complainant, where the complainant makes out a prima facie case that the registrant lacks rights or legitimate interests, the burden of production on the second element in Article 4(a) of the Policy shifts to the registrant to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the registrant fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element in Article 4(a) of the Policy.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Registrant lacks rights or legitimate interests in the disputed domain name. The Registrant 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.

Consequently, the Panel finds that the second element in Article 4(a) of the Policy has been established.

C. Registered or Used in Bad Faith

Considering the evidence submitted by the Complainant that THE FRANKIE SHOP Trademarks has been featured in major magazines such as Vogue and Forbes and is followed by over a million followers on the social network Instagram, the Panel finds that THE FRANKIE SHOP Trademarks are well known around the world as a fashion clothing brand for women.

Therefore, it is implausible that Registrant was unaware of the Complainant when registering the disputed domain name, and the composition of the disputed domain name imitating the Complainant's THE FRANKIE SHOP Trademarks strongly suggest that Registrant had THE FRANKIE SHOP Trademarks in mind when registering the disputed domain name (see The Frankie Shop LLC v. Austin Hart, WIPO Case No. D2021-3553 <shop-frankie.com>).

Moreover, the Registrant is using the disputed domain name to operate a parking page that contains a number of sponsored links. Further, the Registrant offered the sales of the disputing domain name for the high amount of 4,000 Euros at the parking page. These facts support a finding of use in bad faith since the disputed domain name is used for intentionally attempting to attract Internet users for commercial gain within the meaning of Article 4(b)(iv) of the Policy.

As a result, the Panel reached the conclusion that the Complainant has succeeded in the third element of Article 4(a) of the Policy and is entitled to the remedy requested, namely that the disputed domain name be transferred to the Complainant.

7. Decision

For all the foregoing reasons, in accordance with Article 4(i) of the Policy and Article 15 of the Rules, the Panel orders that the disputed domain name <thefrankieshop.jp> be transferred to the Complainant.

Decided on May 26, 2025
Yuji Yamaguchi
Sole Panelist
Japan Intellectual Property Arbitration Center

Annex: Procedural History