The Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Lê Van Luong, Cong ty TNHH Thuong Mai NNA Viet Nam, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2020 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 December 3, 2020. 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 December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent’s communication was received by the Center on December 11, 2020. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 15, 2021. 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 following facts are undisputed. The Complainant is a company, famous for globally operating creative content platforms such as Toutiao, Douyin and TikTok. The TikTok application was launched in May 2017 and has been downloaded by over 500 million users in the Google Play store. The Complainant is the owner of many registered trademarks in relation to TIKTOK worldwide, including, but not limited to, the international registration (word mark) TIK TOK, with registration number 1485318, registered on March 19, 2019 and the Vietnamese trademark (figurative mark) TIK TOK, with registration number 4201735187, registered on February 17, 2020 (hereinafter referred to together, in singular, as the “Trademark”). The Domain name was registered on August 27, 2020. The Domain Name resolves to a website (the “Website”). On the Website, an online trading platform is being offered. 5. Parties’ Contentions A. Complainant Insofar as relevant, the Complainant contends the following. The Domain Name is confusingly similar to the Trademark. The Domain Name entirely consists of the Trademark and adds the generic term “option”. This generic term does not distinguish the Domain Name from the Trademark. The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not commonly known by the Trademark and is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Website contains false and misleading claims, as it claims to have more than 800,000 trades daily, more than 800,000 countries of presence, and more than 33 million trades in the past week. In contrast thereto, the YouTube channel of the Respondent only has 7 views and no registered company under “TikTok Option” has been found. Therefore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. The Domain Name was registered and has been used in bad faith. The Trademark predates the registration date of the Domain Name. At the time of registration of the Domain Name, the Respondent knew, or should have known, the existence of the Trademark and therefore registered the Domain Name in bad faith. The Respondent has intentionally misappropriated the Trademark as a way of redirecting Internet users to the Website. The Domain Name creates confusion as to the source of the Domain Name in an attempt to trade on the goodwill associated with the Complainant’s Trademark. B. Respondent Except for the email communications received from the Respondent on December 11, 2020 and December 14, 2020, the Respondent did not formally reply to the Complainant’s contentions. In the above-referenced email communications, the Respondent stated that the Domain Name has been registered “as a test” and that the Domain Name can be “deleted”. After the Respondent was asked whether it would transfer the Domain Name to the Complainant, the Respondent declined. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Name 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the trademark. The Complainant has shown that it has rights in the Trademark. As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “tiktok” and “option”. The element “tiktok” is identical to the Trademark (and to the word element in the figurative Vietnamese registration). The element “option” is a dictionary term. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the element “option” does not prevent a finding of confusing similarity. Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark. For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence, and email communications that have been received from the Respondent. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as: (i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “tiktok” or “tiktokoption” is the Respondent’s name or that the Respondent is commonly known as “tiktok” or “tiktokoption”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark. Furthermore, the use of the Domain Name cannot be considered as a bona fide offering of goods or services. The Complainant has sufficiently demonstrated that the Website consists of false and misleading information, e.g. the reference to 800,000 countries, and that the Respondent does not actually offer an online trading platform. The Panel finds that the Respondent has intentionally registered the Domain Name for the purpose of making illegitimate or unfair use of the Trademark by misleading Internet users who are seeking information about the Complainant’s products or services. Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name. Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name is also affirmed by the fact that no formal or substantive response was filed by the Respondent. Moreover, the fact that the Respondent replied that the Domain Name could be deleted, confirms the Panel’s findings. Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith The Panel finds that the Domain Name was registered and is being used in bad faith. The Panel refers to its considerations under section 6.B and adds the following. In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the existence of the Complainant’s activities and rights at the time the Respondent registered the Domain Name. The Panel finds that the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). Finally, although the lack of a formal or substantive response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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 Domain Name, Willem J. H. Leppink
Sole Panelist
Date: February 9, 2021
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