The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Kemal Aydin, Kemal, Antarctica. 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 16, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 22, 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 23, 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 January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on February 8, 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 Complainant is a Cayman Islands, United Kingdom registered company which owns a social media app downloaded more than 500 million times that allows its global user base to create, share and watch short videos. The Complainant holds registrations for the trademark TIK TOK, and variations of it, in several countries, including United States trademark registration No. 5653614 TIK TOK registered on January 15, 2019 with a first use in commerce in 2017. The Complainant is also the owner of, inter alia, the domain name The Disputed Domain Name The Complainant cites its trademark registrations of the trademark TIK TOK in various countries as prima facie evidence of ownership. The Complainant submits that the mark TIK TOK is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the TIK TOK trademark and that the similarity is not removed by the addition of the words “verified” and “accounts”, and addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to perpetrate a phishing scam, and because its web presence subsequently resolved to an inactive “error” webpage that also stated “Warning: Suspected Phishing Site Ahead!”. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the widespread prior use of the Complainant’s trademark, and that it was being used to “masquerade as (the) Complainant” as part of a fraudulent “phishing” scheme. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark TIK TOK in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the TIKTOK trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark TIK TOK; (b) with the word “verified” added; (c) followed by the word “accounts”; (d) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name is generally disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name, specifically: “tiktokverifiedaccounts”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, two words: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Bytedance Ltd. v. Stanley Billy, Natasha Selly,WIPO Case No. D2020-1749; Bytedance Ltd. v. Registration Private, Domains By Proxy, LLC / Fotios Tsiouklas, Kickspan,WIPO Case No. D2020-2439; Bytedance Ltd. v. Whois Privacy, Private by Design, LLC / Hoang Tung,WIPO Case No. D2020-3084). This Panel finds that the addition to the trademark TIK TOK of the words “verified” and “accounts” does not prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark TIK TOK is not a dictionary word but rather a highly distinctive and well-known name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that “Respondent’s inclusion of Complainant’s logo on the Disputed Domain Name’s website was a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand.” The Complainant also supplied a screen capture of the Respondent’s website, before it was taken down, that includes the TIK TOK logo along with an invitation for users to fill in their TIK TOK login details. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using a fake website masquerading as the Complainant operating under the brand TIK TOK for the purpose of misleading Internet users based on the wide recognition of the Complainant’s mark TIK TOK with the intention to deceive TIK TOK users into submitting private and possibly sensitive user login information. It may therefore reasonably be inferred that the Respondent was opportunistically using the Complainant’s mark in the furtherance of the perpetration of a fraud. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, this Panel accepts the Complainant’s evidence of the conduct of the Respondent by masquerading as a website authorized or administered by the Complainant, as evidence that the Respondent was well aware of the Complainant’s trademark TIK TOK when registering the Disputed Domain Name. The Panel finds that the most likely reason for the Respondent registering the Disputed Domain Name and then using it to masquerade as the Complainant, is that the Respondent was attempting to perpetrate a fraud. On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive TIK TOK users into believing it was a legitimate website hosted at a domain name associated with the Complainant’s TIK TOK brand. The obvious risk of deception or confusion as to the origin of such a website, or affiliation of the web presence with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.4. Evidence was also furnished that the Disputed Domain Name subsequently resolved to an inactive “error” webpage unconnected with any bona fide supply of goods or services by the Respondent. Having regard to (i) the high degree of distinctiveness and well-known reputation of the TIK TOK mark, (ii) the failure of the Respondent to submit a response, (iii) the adverse inference this Panel draws from the Respondent’s use of a privacy shield; (iv) the apparent false registrant address hidden behind the privacy service of “Water St, Antarctica”; and (v) the implausibility of any good faith use to which the disputed domain name may be put, in the circumstances finds this as further evidence of the Respondent’s bad faith (see WIPO Overview 3.0, section 3.1.4). In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark TIK TOK and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating a website that the Disputed Domain Name resolved to, then used that website to pretend to be authorized or administered by the Complainant, in an attempt to trick TIK TOK users into disclosing their login details, an activity that falls into a category of conduct known as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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, Nicholas Weston
Sole Panelist
Date: February 18, 2021
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