TikTok Ltd. v benny chen, Fengyang Network Technology Ltd

WIPO Case No. D2023-2972

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TikTok Ltd. v. benny chen, FENGYANG NETWORK TECHNOLOGY LTD

Case No. D2023-2972

1. The Parties

1.1	The Complainant is TikTok Ltd., Cayman Islands, represented by CSC Digital Brand Services Group AB, Sweden.
1.2	The Respondent is benny chen, FENGYANG NETWORK TECHNOLOGY LTD, United Kingdom.

2. The Domain Names and Registrar

2.1 The disputed domain names, <tiktok-shop07.com>, <tiktok-shop08.com>, <tiktok-shop15.com>,
<tiktok-shop16.com>, <tiktok-shop33.com>, <tiktok-shop36.com>, <tiktok-shop42.com>,
<tiktok-shop52.com>, <tiktok-shop72.com>, <tiktok-shop73.com>, <tiktok-shop85.com>,
<tiktok-shop96.com>, and <tiktok-shop98.com> (the “Domain Names”), are registered with
Dynadot, LLC (the “Registrar”).

3. Procedural History

3.1	The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2023. At that time the WhoIs details in respect of the Domain Names were all marked “REDACTED FOR PRIVACY, Super Privacy Service LTD c/o Dynadot”. On July 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Names. The Center sent an email communication to the Complainant on July 13, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 13, 2023.
3.2	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”).
3.3	In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2023.

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3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 10, 2023.
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

4.1

The Complainant is a company incorporated in the Cayman Islands, which is an overseas territory of
the United Kingdom (usually referred to as a “British Overseas Territory”). The Complainant forms
part of the TikTok group of companies. TikTok is a very well known Internet technology business that
enables users to create and upload short videos. It was launched in May 2017 and reached over a
billion users worldwide in September 2021. It currently has over 1.5 billion users as of April 2023. Its
services are available in 150 different markets, in 75 languages, and has offices around the world
including in United States of America, United Kingdom, France, Germany, United Arab Emirates,
India, Singapore, Indonesia, Republic of Korea, and Japan. Companies in the TikTok group include
TikTok Information Technologies UK Limited, which is incorporated in England and Wales (“TikTok
UK”).

4.2

Companies in the TikTok group own numerous registered trade marks in multiple jurisdictions
including registered trade marks that either comprise or incorporate the terms “Tik Tok” or “TikTok”.
These include:

(i)	United States registered trade mark No. 5653614 for TIK TOK as a standard character mark in classes 9, 38, 41 and 42 with a filing date of April 23, 2018 and a registration date of January 15, 2019. This mark is owned by the Complainant.
(ii)	United Kingdom registered trade mark No. UK00917891401 (derived from a pre-Brexit European registered trade mark) for TIK TOK as a word mark in classes 9, 38 and 41 with a deemed filing date of April 23, 2018, a registration date of November 29, 2018 and claiming a priority date of October 23, 2017 from an Indian registered trade mark. This mark is owned by TikTok UK.
(iii)	United Kingdom registered trade mark No. UK00003598859 for TIKTOK SHOP as a word mark in classes 9 and 35 with a filing date of February 22, 2021 and, a registration date of June 25, 2021. This mark is owned by TikTok UK.
(iv)	International trade mark registration No. 1485318 for TIK TOK as a word mark in classes 9, 25, 35, 38, 41, 42, 45 filed on March 9, 2019. This mark had proceeded to grant in thirteen jurisdictions and is owned by TikTok UK.

4.3

The primary website of the Complainant operates from the domain name <tiktok.com>. That website
had a total of 2.0 billion million visitors in March 2023 alone. The TikTok group also uses on that
website and more generally in respect of its activities, variants of the following logo:

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4.5 The registrant recorded in the WhoIs details for the Domain Names is what appears to be a company
based in the United Kingdom. Online Companies House records show that there is a recently
incorporated company with that name in England and Wales.

5. Parties’ Contentions

A. Complainant

5.1

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

5.2

Notably, the Complainant contends that the each of the Domain Names is confusingly similar to a trade mark in which the Complainant has rights in that can be considered as capturing, in its entirety, the Complainant’s TIKTOK trade marks and simply adding a punctuation mark “-” (hyphen) and a number (07, 08, 15, 16, 33, 36, 42, 52, 72, 73, 85, 96 or 98) as a suffix. It further contends that none of the examples of rights or legitimate interests set out in the Policy apply and that the fame of the Complainants and its marks are such that is highly unlikely that the Respondent did not know of the Complainant’s legal rights in the “TikTok” name at the time the Domain Names were registered. It also alleged that the way in which the Domain Names have been used has involved the Respondent passing itself off as the Complainant, which is neither a bona fide offering of goods or services such as to provide rights or legitimate interests in the Domain Names and also demonstrates registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1	It is generally 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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
6.2	Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
6.3	The Panel finds the entirety of the mark is reproduced within each of the Domain Names. Accordingly, each of the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the addition the term “shop” and a number in each of the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

B. Rights or Legitimate Interests

6.4	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.
6.5	In the present case the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has not rebutted the

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Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names.

6.6

However, dealing with the issue more directly, and for reasons that are set out in the context of its assessment of bad faith the Panel is satisfied that the Domain Names have been registered in order to impersonate the Complainant for commercial gain. There is no rights or legitimate interests in such impersonation (WIPO Overview 3.0, section 2.13.1) and the Panel is of the view that such impersonation provides positive evidence that no rights or legitimate interests exists.

6.7

Accordingly the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

6.8	The Panel is satisfied that each of the Domain Names have been registered by the Respondent with knowledge of the Complainant and its rights and with a view to impersonating the Complainant for financial gain.
6.9	In this respect the Panel accepts that the Complainant’s TIKTOK mark is famous and was so at the time that the Domain Names were registered. Further, each of the Domain Names can only be sensibly read as incorporating that mark. Last but not least, there is the websites that have operated from the Domain Name, which prominently display the Complainant’s name and logo such that any person viewing that website is likely to conclude that this is a website operated or at least authorised by the Complaint. The registration and use of a domain name to engage in such impersonation involves bad faith registration and use. Further such activities fall with the scope of the example of circumstances evidencing bad faith registration set out at paragraph 4(b)(iv) of the Policy.
6.10	Accordingly the Panel finds the third element of the Policy has been established.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the
Panel orders that the Domain Names, <tiktok-shop07.com>, <tiktok-shop08.com>,
<tiktok-shop15.com>, <tiktok-shop16.com>, <tiktok-shop33.com>, <tiktok-shop36.com>,
<tiktok-shop42.com>, <tiktok-shop52.com>, <tiktok-shop72.com>, <tiktok-shop73.com>,
<tiktok-shop85.com>, <tiktok-shop96.com>, and <tiktok-shop98.com>, be transferred to the
Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: August 24, 2023

(the “TikTok Logo”)

4.4 Each of the Domain Names was registered on or between June 17 and June 20, 2023. Since
registration the Domain Names have been used for websites that display a variant of the TikTok Logo
combined with the text SHOPTikTok offering a range of products for sale. However, more recently
and as at the date of this decision, the Domain Names when used return an “Error 530” message
combined with Chinese text.