TikTok Ltd. v vishal soni

WIPO Case No. DCO2023-0080

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TikTok Ltd. v. vishal soni

Case No. DCO2023-0080

1. The Parties

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

Services Group AB, Sweden.

The Respondent is vishal soni, India.

2. The Domain Name and Registrar

The disputed domain name <tiktok-18.co> (the “Domain Name”) is registered with Dynadot, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed 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 Domain Name. On September 13, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 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 20, 2023, the Respondent sent an email communication to the Complainant and to the Center asking that the matter shall be closed. Further to this email communication the Center sent an email to the Parties informing them that if they want to explore settlement options, the Complainant may request the suspension of the proceeding. On September 25, 2023, the Complainant confirmed that he does not want to explore settlement option and that he wishes the proceeding to be continued.

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, and the proceedings commenced on September 29, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2023. The Respondent sent several email communications to the Center before and after the notification of the Complaint. Accordingly, the Center

notified the Parties of the commencement of the Panel appointment process on October 20, 2023.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 31, 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 was launched in May 2017. It became the most
downloaded application in the US in October 2018. TikTok reached over a billion users worldwide in
September 2021 and currently has over 1.5 billion users as of April 2023. The Complainant has a large
Internet presence through its primary website <tiktok.com>, with a total of 2.0 billion million visitors in March

2023 alone.

The Complainant, with its affiliate, owns trademark registrations for TIK TOK or for TIKTOK in various
jurisdictions, such as in the United States of America the US trademark number 5653614 (registered on
January 15, 2019) and the international registration number 1485318 (registered on March 19, 2019).

The Domain Name was registered on January 10, 2023. The Complainant documents that the Respondent has used the Domain Name to host a website that claims to be affiliated with the Complainant’s brand and using the Complainant’s logo, trademark and color scheme. Internet users have also been directed to a website that features and promotes adult content. At the time of drafting the Decision, the Domain Name resolved to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations and argues that the TIKTOK brand is famous worldwide. The only difference between the Complainant’s trademark and the Domain Name is the addition of the numbers “18” and a hyphen. The addition does not negate the confusing similarity between the

Domain Name and the Complainant’s trademark. The Complainant also argues that the Respondent’s use of the Domain Name, as described above, contributes to the confusion.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized, licensed, or permitted to register or use a domain name incorporating the Complainant’s trademark. The Respondent’s use of the Domain Name is not bona fide commercial or fair or legitimate noncommercial use. The Respondent’s use of the Domain Name has the intention to mislead Internet users as to its affiliation with the Complainant and to trade off the Complainant’s rights and reputation by appearing to offer services in connection to the Complainant.

The Complainant argues that the Respondent had actual knowledge of the Complainant and its trademark constitutes a disruption of the Complainant’s business. The Respondent’s use of a privacy service to hide its
when the Respondent registered the Domain Name. Moreover, the Complainant argues that it is not
possible to conceive of a plausible situation in which the Respondent would have been unaware of the
identity is further indication of bad faith.

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B. Respondent

The Respondent did not formally reply to the Complainant’s contentions but sent several informal email messages to the Center and to the Complainant before and after the Notification of the Complaint. The Panel notes that the Respondent appears not to oppose to a transfer of the Domain Name as he states in

said emails “in fact I have closed this domain permanently” and “I have no interested this domain you can

cancel my domain … and if you want to close this domain then I will close the domain ok…”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has established that it has rights in the trademarks TIK TOK and TIKTOK. The Domain
Name differs from the trademark in the addition of a hyphen and “18”. This addition does not prevent a
finding of confusing similarity. See WIPO Overview 3.0, section 1.8. For the purpose of assessing the
confusing similarity under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD; see

WIPO Overview 3.0, section 1.11.1.

Based on the available record, 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. While 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 often impossible task 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. If the respondent fails to come forward with
such relevant evidence, the complainant is deemed to have satisfied the second element. See

WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the
Respondent lacks rights or legitimate interests in the 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 Domain Name. On the contrary, the Respondent appears not to oppose
to a deletion or transfer of the Domain Name. The Respondent is not affiliated or related to the Complainant.
There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired
trademark rights. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the
Domain Name in connection with a bona fide offering of goods or services. The Respondent’s use of the

Domain Name is rather evidence of bad faith, see below.

Based on the available record, the Panel finds the second element of the Policy has been established.

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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.

It is clear that the Respondent is intentionally creating a likelihood of confusion with the Complainant’s described above, is also clear evidence of bad faith.

trademark as to the source, sponsorship, affiliation, or endorsement. Based on the fame of the
Complainant’s trademark and the composition and use of the Domain Name, it is evident that the
Respondent had actual knowledge of the Complainant when the Respondent registered the Domain Name.
The Panel concurs with the Complainant, it is not possible to conceive of a plausible situation in which the

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

The third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the Domain Name <tiktok-18.co> transferred to the Complainant.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: November 9, 2023