TikTok Ltd. v Nguyen Thanh Long, Thanh Long

WIPO Case No. D2023-3747

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TikTok Ltd. v. Nguyen Thanh Long, Thanh Long

Case No. D2023-3747

1. The Parties

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

Services Group AB, Sweden.

The Respondent is Nguyen Thanh Long, Thanh Long, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <tiktok18live.site> and <tiktok69.site> are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2023. On September 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 14, 2023, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (GMO-Z.com RUNSYSTEM) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 14, 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 September 19, 2023.

On September 14, 2023, the Center transmitted an email communication to the Parties in both English and Japanese regarding the language of the proceeding. On September 19, 2023, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, both in English and Japanese, and the proceedings commenced on September 26, 2023. In
accordance with the Rules, paragraph 5, the due date for Response was October 16, 2023. The
Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on

October 17, 2023.

The Center appointed Masato Dogauchi as the sole panelist in this matter on October 26, 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

The Complainant is an Internet technology company that serves as a host for the video contents created by
its users. The Complainant was established in 2017 and currently has over 1.5 billion users in more than

150 different markets in 75 languages as of April 2023.

The Complainant has registered its TIKTOK trademark, including:

- European Union Registration for TIKTOK No. 017913208, registered on October, 20, 2018;

- United Kingdom Registration for TIKTOK No. 00917891401, registered on November 29, 2018;

- United States of America Registration for TIKTOK No. 5653614, registered on January 15, 2019;

- International Registration for TIKTOK No. 1485318, registered on March 19, 2019;

- United States of America Registration for TIKTOK No. 5974902, registered on February 4, 2020;

- United States of America Registration for TIKTOK No. 6847032, registered on September 13, 2022.

The Complainant also has an Internet presence through its website <tiktok.com>, which had a total of
2billion visitors in March 2023 alone.

The disputed domain names <tiktok18live.site> and <tiktok69.site> were registered on March 7, 2023 and March 3, 2023 respectively, and resolve to active websites that claim to be affiliated with the Complainant and direct Internet users to websites that promote adult contents. Additionally, the disputed domain names

have also been set up with mail exchanger (MX) records.

5. Parties’ Contentions

The Complainant’s contentions are divided into three parts as follows:

First, the Complainant asserts that the disputed domain names are confusingly similar to its TIKTOK trademark, since both disputed domain names incorporate the TIKTOK trademark in its entirety. The other parts of the disputed domain names consist of the terms “18live” and “69” respectively, and “.site”. The numbers “18” and “69” and the generic term “live” added to the end of the trademark should not be taken into consideration in the confusing similarity test. Also, the generic Top-Level Domain (“gTLD”) “.site” should be disregarded in the same test.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant confirms that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant’s trademark TIKTOK in any manner. The Complainant contends that the Respondent is not commonly known by the name “tiktok18live” nor “tiktok69”. The facts that the Respondent was using a privacy WHOIS service and that the disputed domain names resolve to an active website that claim to be affiliated with the Complainant and direct Internet users to websites that promote adult contents show that the Respondent is not doing a bona fide offering of goods or services by using the disputed domain names.

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Furthermore, it should be noted that the Respondent has not submitted any evidence demonstrating rights or legitimate interests in the disputed domain names.

Third, the Complainant asserts that the disputed domain names have been registered and are being used in bad faith. The Complainant contends that, considering that the Complainant’s trademark has been known globally since 2017 and the Respondent’s registration of the disputed domain names were done in 2023, it should be implausible for the Respondent to have been unaware of the Complainant’s trademark. In addition, the way of use of the disputed domain names should also be considered to show to the Respondent’s knowledge of the Complainant and its trademark. Therefore, the bad faith registration should be found in this case. With regard to the bad faith use, the Complainant contends that the fact that the disputed domain names resolve to active websites that claim to be affiliated with the Complainant and direct Internet users to websites that promote adult contents should be deemed to show that the Respondent is trying to benefit from the fame of the Complainant’s TIKTOK trademark. Therefore, it should be determined that the disputed domain names are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

(i)        the disputed domain names are 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 disputed domain names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

WIPO Overview 3.0.

The disputed domain names respectively incorporate the Complainant’s TIKTOK trademark in its entirety. the above principle in finding the confusing similarity in this case. And incidentally, the gTLD “.site” is irrelevant in the determination of the confusing similarity between the disputed domain names and the TIKTOK trademark. See, section 1.11.1 of the
The other parts of the disputed domain names consist of the terms “18live” and “69” respectively, and “.site”.
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms
(whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of
confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on

Therefore, the Panel finds that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights. The above requirement provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied.

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B. Rights or Legitimate Interests

The Panel finds that there is no evidence that shows the Respondent is commonly known by the name “tiktok18live” nor “tiktok69”. Further, the Respondent is not affiliated with the Complainant or authorized or licensed to use the Complainant’s TIKTOK trademark. And it is determined that the use of the disputed domain names in this case, that is, suggesting to be affiliated with the Complainant and directing Internet users to websites that promote adult contents constitute neither a bona fide offering service nor a legitimate noncommercial or fair use. Since the Respondent did not reply to the Complainant’s contentions in this proceeding, the Panel finds on the available record that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. See section 2.1 of the WIPO Overview 3.0.

The above requirement provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied.

C. Registered and Used in Bad Faith

With regard to the requirement that the Respondent registered the disputed domain names in bad faith, in consideration of the fact that the Complainant is a globally known Internet technology company serving as a host for the video contents created by its over 1.5 billion users, it is highly unlikely that the Respondent did not know of the Complainant’s right in the trademark at the time of registration of the disputed domain names in March 2023. And, the way of use of the disputed domain names also shows the Respondent’s knowledge of the Complainant and its trademark. Therefore, it is found that the Respondent registered the disputed domain names in bad faith.

On the other hand, with regard to the requirement that the Respondent is using the disputed domain names
in bad faith, the fact that the disputed domain names resolve to websites that suggest to be affiliated with the
Complainant and direct Internet users to websites that promote adult contents is enough to show that the
Respondent’s use of the disputed domain names is being done in bad faith.

Since the Respondent did not reply to the Complaint in this proceeding, and noting the above circumstances, the Panel finds that the disputed domain names have been registered in bad faith and are being used in bad faith. The above requirement provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied.

ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are

determined to be satisfied.

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 names, <tiktok18live.site> and <tiktok69.site>, be transferred to the

Complainant.

/Masato Dogauchi/
Masato Dogauchi
Sole Panelist
Date: November 9, 2023