TikTok Ltd. v Muhammad khalid

WIPO Case No. D2024-0547

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TikTok Ltd. v. Muhammad khalid

Case No. D2024-0547

1. The Parties

The Complainant is TikTok Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Muhammad khalid, Pakistan.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2024. amended Complaint on February 8, 2024.

On February 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 7, 2024, 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, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on February 7, 2024, providing the registrant and contact information disclosed by the

The Respondent sent email communications to the Center on February 7 and 8, 2024, restating the contact information already disclosed by the Registrar.

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 paragraph 5, the due date for Response was March 4, 2024. The Respondent sent email communications to

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the Center on February 13, 14, 16 and on March 1, 2, 4, 2024 denying in essence any infringement of the commencement of Panel appointment process on March 5, 2024.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on March 12, 2024. 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 an Internet technology company that owns and operates creative content platforms. TikTok is the name of an application, which enables users to create and upload short videos. TikTok was launched in May 2017. Today, TikTok is available in more than 150 different markets in 75 languages, and is widely known.

The Complainant is the owner of the following trademark registration for TIK TOK:

- United States of America trademark registration no. 5653614, registered on January 15, 2019, in

classes 9, 38, 41 and 42.

The Complainant also submits evidence of registration of the below trademark registrations for TIK TOK in the name of its affiliate company TikTok Information Technologies UK Limited:

- United Kingdom trademark registration no. UK00917891401, registered on November 29, 2018, in

classes 9, 38 and 41;

- European Union trademark registration no. 017913208, registered on October 20, 2018, in classes 9,

25, 35, 42 and 45;

- International trademark registration no. 1485318, registered on March 19, 2019, in classes 9, 25, 35,

38, 41, 42 and 45.

The Complainant is also the owner of the domain name <tiktok.com>, which was originally registered on
July 21, 1996.

The disputed domain name <tiktoklive.pro> was created on November 19, 2023. At the time of filing of the Complaint, the disputed domain name resolved to a website displaying the Complainant’s TIK TOK trademark, logo and colors and allegedly offering a platform for users to connect, create content and share live experiences.

The mail exchange (“MX”) records (i.e., the mail exchanger records specifying the mail server responsible for accepting email messages) for the disputed domain name suggest that it can be used for email communication.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its TIK TOK
registered trademark as it captures the entirety of its trademark with the mere adjunction of the generic term
“live”.

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The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Respondent has not been authorized by the Complainant to use its trademark within the disputed domain name; (iii) the Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent making any legitimate non-commercial use of the disputed domain name.

Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith. It considers that the disputed domain name is being intentionally used to host a website to create a false affiliation between the disputed domain name and the Complainant’s trademarks. The website reproduces the trademark and the logo of the Complainant. These actions demonstrate, in the Complainant’s eyes, an intention to unlawfully profit from the use of the Complainant’s trademark.

B. Respondent

The Respondent sent email communications in which he contested having infringed any UDRP policy and requested the unlocking of his domain name. However, he did not substantively reply to the Complainant’s contentions or submit any formal Response.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i)        the domain name registered by the respondent 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 domain name; and

(iii)      the domain name registered by the respondent has been registered and is being used in bad faith.

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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “live”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

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.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

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of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, 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 (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the disputed domain name redirected to an active website purporting to be an affiliated website of the Complainant, reproducing the trademark and logo of the Complainant, as well as colors used by the Complainant on its website and application, which in the Panel’s view demonstrates an obvious attempt on the part of the Respondent to mislead Internet users seeking the Complainant’s services and website.

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

Panels have held that the use of a domain name for illegal activity here, impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds that the Respondent was necessarily aware of the Complainant’s trademark when it registered the disputed domain name, given the distinctive character and reputation of such trademark and the subsequent use of the disputed domain name, which resolved to a website reproducing inter alia the Complainant’s logo. The Panel accepts therefore that the disputed domain name was registered in bad faith.

In the present case, the Panel notes that the Respondent used the disputed domain name in connection with an active website purporting to be an affiliated website of the Complainant or at least claiming to offer services in connection with the Complainant. The commercial website connected with the disputed domain name reproduced the logo of the Complainant.

This use is apt to lead Internet users into believing that the website at issue is an official website of the

Complainant, or at least a website sponsored or endorsed by the Complainant.

Panels have held that the use of a domain name for illegal activity here, impersonation/passing-off
constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the
Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Finally, the MX records relating to the disputed domain name suggest that it can be used for email communication, possibly for phishing purposes. UDRP panels have found the activation of MX servers, which can be used to create email addresses for phishing purposes, may be further evidence of bad faith (see Kingfisher Investissements v. Brico Depot, Brico Depot, WIPO Case No. D2020-2702 and Robertet SA v. Marie Claude Holler, WIPO Case No. D2018-1878).

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The Panel finds that the Complainant has established the third element 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 <tiktoklive.pro> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: March 26, 2024