TikTok Ltd. v Extent Media, Extent Media

WIPO Case No. D2023-2548

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TikTok Ltd. v. Extent Media, Extent Media

Case No. D2023-2548

1. The Parties

The Complainant is TikTok Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand

Services Group AB, Sweden.

The Respondent is Extent Media, Extent Media, Türkiye.

2. The Domain Name and Registrar

The disputed domain name <tiktokpanorama.com> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2023. connection with the disputed domain name. On June 20, 2923, 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 (DT) / Wix.com Ltd.) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date, 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 June 22, 2023.

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 June 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2023.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 18, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 world-renowned application created in 2017. The Complainant, with its affiliate TikTok Information Technologies UK Limited, owns many trademark registrations for TIK TOK such as United States of America registration No. 5653614, registered on January 15, 2019, and European Union registration No.

017913208, registered on October 20, 2018.

The disputed domain name was registered on April 28, 2023, and resolves to a website where users may purchase or recharge TikTok points at special prices.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant, together with its affiliates, owns numerous trademark registrations for TIK TOK. The term “panorama” increases confusing similarity as it relates to the

Complainant’s trademark given that it is a video shooting effect commonly applied to videos posted on the Complainant’s platform. Also, the Complainant’s trademark remains recognizable. The generic Top-Level Domain (“gTLD”) is not relevant in the assessment of confusing similarity. The use of the disputed domain name adds to the confusion as it displays the Complainant’s trademark and content relating to the
Complainant’s coin recharge website.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has exclusive rights in the trademark TIK TOK. The Complainant did not authorize or license the Respondent to use its trademark in the disputed domain name nor is the Respondent affiliated with the Complainant. The Respondent is not commonly known by the disputed domain name as there is no evidence to suggest so. The Respondent has used a privacy service. The Respondent must have been

aware of the trademark TIK TOK as it is a famous trademark and the disputed domain name was created few years after the launch of the trademark TIK TOK. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services nor in connection with a legitimate

noncommercial or faire use of the disputed domain name as it redirects to a website that pretends to be an The intention to pass off is confirmed by the fact that the Complainant’s trademark and logo is displayed on the website of the Respondent. Additionally, the website could be used for phishing as users could provide their personal information together with credit card information.

authorized agent of the Complainant where users may purchase or recharge virtual coins. Thus, the

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is well known and was used years before the registration of the disputed domain name. Also, the website to which the disputed domain name resolves displays the Complainant’s trademark and logo and the use of the term “panorama” together with the Complainant’s trademark causes confusing similarity. Hence, the Respondent must have been aware of the Complainant’s trademark. The Respondent has been using the disputed domain name to attract Internet traffic for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Respondent is trying to pass itself off as the Complainant’s authorized agent.

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant, together with its affiliates, owns trademark registrations for TIK TOK. The Panel is satisfied that the Complainant has established its rights in the trademark TIK TOK.

The disputed domain name incorporates the Complainant’s trademark TIK TOK in its entirety. The additional term “panorama” does not prevent a finding of confusing similarity. The gTLD “.com” can be ignored when assessing confusing similarity as it is viewed as a standard registration requirement.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant

inter alia

asserts, , that the Respondent is not authorized by the Complainant to use its trademark and the established a prima facie case, and the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. The absence of a response by the Respondent allows the Panel to draw inferences, and under the circumstances, the absence of a response leaves the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name unrebutted.

Having said that, the Panel finds it useful to assess whether the Respondent is using the disputed domain
name in connection with a bona fide offering of goods or services as it offers TikTok points recharge and
purchase packages at special prices, without any prominent and accurate disclaimer regarding the
relationship between the Complainant and the Respondent. The Panel does not find such use to constitute
a bona fide offering of goods or services because the Respondent has targeted the Complainant and its
trademark when choosing the disputed domain name. The Respondent was clearly aware of the
Complainant and its business. On this basis, it is clear that the Respondent was targeting the Complainant’s
trademark when choosing the disputed domain name. Therefore, the Panel is of the view that the
Respondent’s use of the disputed domain name is trying to capitalize on the reputation and goodwill of the
Complainant’s trademark.

Additionally, prior UDRP panels have found that domain names that comprise a complainant’s trademark in its entirety plus certain additional terms are seen as tending to suggest sponsorship or endorsement by the trademark owner and carry a risk of implied affiliation (see section 2.5.1 of the WIPO Overview of WIPO

Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The nature of the disputed domain name in this case is inherently misleading as it effectively suggests sponsorship or endorsement by the Complainant.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing
that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademark as it is well known and the
Respondent has used the disputed domain name to sell recharge and purchase packages for TikTok points,

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which are related to the Complainant’s application. Furthermore, the Complainant’s trademark was
registered a couple of years before the registration of the disputed domain name. Given the above-
mentioned circumstances, the Panel is of the view that the Respondent has used the disputed domain name,
to attract Internet users for commercial gain, which falls squarely within the meaning of paragraph 4(b)(iv) of
the Policy.

Further, prior UDRP panels have recognized that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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, <tiktokpanorama.com>, be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: July 31, 2023