Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States” or “US” or “USA”) / Chris Bock, TikTok Truck, TikTokTruck, United States.1 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 24, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 Complainant on December 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 4, 2021. From December 30, 2020, to January 11, 2021, Respondent sent various email communications to the Center prior to the formal commencement of the proceedings. 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 Respondent of the Complaint, and the proceedings commenced on January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Response due date was extended twice, first to February 12, 2021, and then again to February 19, 2021, further to Respondent’s requests. Respondent finally filed various Responses between February 22, 2021, and February 25, 2021. Between February 25, 2021, and March 22, 2021, Respondent sent further email communications to the Center including supplemental fillings. The Center appointed Stephanie G. Hartung, Sebastian M.W. Hughes, and Tony Willoughby as panelists in this matter on March 18, 2021. The Panel finds that it was properly constituted. Each member of 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 Complainant is a company organized under the laws of the Cayman Islands whose business, inter alia, is to run the internationally well-known video-sharing platform “TikTok”, which was launched outside of China in May 2017, and became the most downloaded application in the United States in October 2018. Complainant has provided evidence, that it, together with its subsidiary TikTok Information Technologies UK Limited, is the owner of numerous trademark registrations relating to its brand “TikTok” across various jurisdictions, including the following with protection for the territory of the United States and predating the registration of the disputed domain name by Respondent: - Word mark TIK TOK, United States Patent and Trademark Office (USPTO), registration number: 5653614, registration date: January 15, 2019, status: active. Moreover, Complainant has demonstrated that it owns the domain name Respondent is a resident of the United States whose business is the rental across the United States of an All Glass Mobile PopUp Truck under the trade name of “HappinessEverywhere”. Respondent acquired the disputed domain name on October 26, 2019. By the time of rendering this decision, the disputed domain name resolves to a website at “www.happinesseverywhere.com” where Respondent promotes its truck rental business and provides for the email address On December 1, 2020, Complainant sent a cease and desist letter to Respondent through its authorized legal representatives requesting Respondent, inter alia, to take down the website under the disputed domain name and let the latter expire, also to remove all signage from Respondent’s truck featuring Complainant’s TIK TOK trademark. In this letter, Complainant expressed the view that it did not currently believe that Respondent was engaging in the mentioned unauthorized activities in a deliberate attempt to deceive consumers and trade on Complainant’s valuable reputation. On January 4, 2020, Respondent sent an email communication to the Center, stating that it had removed the “tiktoklogo” both from the signs showing the disputed domain name as well as from the text information that could be reached thereunder. 5. Parties’ Contentions A. Complainant Complainant contends that its TikTok platform is available in more than 150 different markets and 75 languages, and has meanwhile become the leading destination for short-form mobile video, with the TikTok app ranked as “#1 in Entertainment” in the Apple Store and “#3 in Social” with Amazon. Accordingly, Complainant’s TIK TOK trademark is today well recognized and respected worldwide. Complainant submits that the disputed domain name is confusingly similar to Complainant’s TIK TOK trademark as it captures the latter in its entirety, with the generic term “truck” added. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not sponsored by or affiliated with Complainant in any way and has not been given license, authorization or permission to use Complainant’s TIK TOK trademark in any manner, including in domain names, (2) Respondent is not commonly known by the disputed domain name, and the mere identification of Respondent as registrant of the disputed domain name named “TikTokTruck” alone does not confer Respondent the right to register and use the disputed domain name, (3) Respondent is not making a bona fide offering of goods or services under or a legitimate, noncommercial or fair use of the disputed domain name, because naming its website as “TikTokTruck.com” and using Complainant’s TikTok musical note logo, is a direct effort to take advantage of the fame and goodwill that Complainant has built up in its trademark and related logo, and (4) on the website available at the disputed domain name, Respondent offers services to create short-form video/music/dance content, which relate to or compete with Complainant’s own offerings. Finally, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith since (1) Complainant has marketed and sold its goods and services using the TIK TOK trademark since 2017, which is well before Respondent’s registration of the disputed domain name, (2) Respondent has created a domain name that is confusingly similar to Complainant’s TIK TOK trademark and domain name Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent Respondent denies Complainant’s contentions. It contends that the Complaint should be dismissed and that there should be a finding of Reverse Domain Name Hijacking. Complainant’s contentions include a claim that Respondent’s use of a privacy service when registering the disputed domain name is in itself indicative of bad faith registration and use of the disputed domain name. Respondent asserts that the offering of a privacy service is a free-of-charge default option provided by the Registrar. It was unaware of the privacy service until it was drawn to its attention by Complainant. Respondent denies that the disputed domain name is confusingly similar to Complainant’s TIK TOK trademark. Respondent contends that Complainant’s contention that Respondent has the disputed domain name resolving “to a website that allegedly provides services for creating short form videos, which relate or compete with their TikTok app [and] is further evidence that the Disputed Domain Name is confusingly similar to their trademark” is preposterous. Respondent states that confusion is an impossibility, that it has not happened and will not happen. Respondent, furthermore, contends that Complainant’s contention that Respondent’s use of the word “truck” in the disputed domain name means that it has intentionally created a domain name confusingly similar to Complainant’s trademark and domain name is galling. Moreover, Complainant’s contention that the disputed domain name “resolves to a website that features Bytedance’s Tik Tok app” is false. Complainant’s contention that Respondent cannot have been unaware of Complainant and its brands when registering the disputed domain name is misconceived. Respondent states that Complainant was most certainly not a household name in the United States at the time. Respondent also asserts that Respondent is not social media savvy and that the first time it saw Complainant’s musical note logo was when Respondent was reading about Douyin, another of Complainant’s brands, on the Internet. Respondent states: “When I registered Disputed Domain Name on October 26, 2019, it was my intention to some how use it in conjunction with my more than 10 year old All Glass MOBILE PopUpTruck. In 2007, I bought a brand MOBILE Pop Up Truck. From day one, it was always my plan to use it as MOBILE sales, marketing, branding, see-through, fully transparent, vehicle that could be built out for all different kind of functions and transformed for all kinds of different uses.” Respondent has produced evidence to show that for many years he has rented out his truck for a variety of uses, including a sock brand promotion, a celebratory dinner, a mobile shop, a band stand, etc. Respondent explains its choice of the disputed domain name in the following manner: “From Boston to Florida, to California and back across the USA the MOBILE PopUpTruck has had a storied life. That is why the thought of registering the domain name [<]tiktoktruck.com[>], came naturally to me. I was sitting at my laptop on October 26, 2019, I went onto [“]porkbun.com[”], typed in [“]tiktoktruck.com[”] and the name came back as available. Me, as the owner of the MOBILE PopUpTruck, decided I was going to utilize the MOBILE PopUpTruck to incorporate it with the domain name I just registered.” Respondent further states all the signage on the vehicle is held on by magnets and designed to be removable to make way for the signage provided by the renter. Respondent contends that it never intended to deceive anybody or trade on Complainant’s reputation and points to Complainant’s lawyer’s letter acknowledging that “our client does not currently believe that you are engaging in the unauthorized activities in a deliberate attempt to deceive consumers and trade on the ByteDance’s valuable reputation.” Respondent’s contentions are encapsulated in the following passage: “The allegation that, my Mobile PopUpTruck, with a some vinyl signs that are held up by magnets, to allow for easy removal, with the music note and the Disputed Domain Name is somehow using the Complainant’s Trademark and logo to improperly increase traffic to the website for my own commercial gain is patently false. Anyone who would come to my website would immediately see, if only because of its simplicity and dearth of information, that it was a website clearly in need of an upgrade. There is no way that the music note and the 136 words of text contained on my website could in any way be confusingly similar to that of TikTok’s. There are no live icons, no drop down windows, no privacy notice disclaimers, no mentioning of the TikTok App. No use of the page to direct someone to a website or another online web address where they would be at risk of being misled or duped into some kind of commercial transaction. Before there was ever a TikTokTruck.com sign hanging inside the HappinessEverywhere MOBILE PopUpTRUCK, I knew I needed to do everything in my power to be sure that anyone logging onto my website would not think or believe they were in any way on a ByteDance related or sponsored website. This was and still is my objective.” From the above, the Panel concludes that Respondent’s case is that he first decided to adopt for his use the musical note that he first saw used in relation to Complainant’s Douyin product, but that at that stage he was not aware of Complainant or its Tik Tok product and that his choice of the disputed domain name followed later and was coincidental. Respondent seeks a finding of Reverse Domain Name Hijacking on allegations of abusive behaviour on the part of Complainant, ranging from the provision of false accusations and false evidence to numerous egregious breaches of the Rules. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that 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. Supplemental Filings Respondent started sending email communications to the Center between December 30, 2020, and January 11, 2021, thus even prior to the formal commencement of the proceedings. After the Center had twice extended at Respondent’s request the Response due date, which finally ended on February 19, 2021, Respondent filed various Responses between February 22, 2021, and February 25, 2021, followed by further email communications to the Center including supplemental filings from February 25, 2021, to finally March 22, 2021. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of unsolicited (late or even early) supplemental filings. While paragraph 10(d) states that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”, paragraph 12 provides that: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. The principles which the Panel should apply in deciding whether or not to admit unsolicited supplemental filings have been considered in many cases under the Policy and have meanwhile been widely agreed among UDRP panels, in that such supplemental filings should be generally discouraged and only be accepted in “exceptional” circumstances (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6). In the case at hand, on the basis of Respondent’s description of Respondent’s personal circumstances taken at face value, the Panel has been willing to accept that “exceptional” circumstances are present and, thus, has allowed Respondent’s late as well as early supplemental filings into the proceeding. Still, this Panel is convinced that this exceptional concession to Respondent had no bearing on the Panel’s commitment set forth by paragraph 10 of the Rules to treat both Parties equally and fair, and to come to the following decision in due time. B. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name incorporates the TIK TOK trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g., descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “truck” does not prevent a finding of confusing similarity arising from the incorporation of Complainant’s TIK TOK trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). C. Rights or Legitimate Interests Complainant contends that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Complainant asserts that Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its TIK TOK trademark, either as a domain name or in any other way. Further, Respondent does not appear to have any trademark rights associated with the name “Tik Tok” on its own. It is clear that at some point before this dispute started, the disputed domain name resolved to Respondent’s website at “www.tiktoktruck.com” headed by a sign showing the disputed domain name, written with capital letters “T”, e.g., Complainant contends that such use of the disputed domain name obviously was meant to somehow profit for commercial gain from the undisputed reputation which Complainant’s TIK TOK trademark and related logo enjoys, which neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, Section 2.1). Although Respondent has set out his arguments to this case in unusual length, has been granted twice a prolongation of the due date for Response, plus noting that this Panel was willing to accept both early and late filings by Respondent even after the Panel had already been appointed, Respondent has brought nothing forward which would have allowed the Panel to understand precisely why Respondent needed to rely on the name “TikTok” as it appears in the disputed domain name, if it was not to target Complainant’s well-reputed TIK TOK trademark and to profit therefrom in some unjustified manner. While the Panel does not necessarily need to follow Complainant’s line of argumentation that Respondent at some point was truly offering services under the disputed domain name that were in direct competition to Complainant’s business, given the making use of the disputed domain name in the way described above, in particular combining it with Complainant’s TikTok musical note logo, and in the absence of anything credible brought forward by Respondent pointing to the contrary, the Panel is unable to come to any conclusion other than that Respondent was, at some point prior to this Complaint, to a certain extent seeking to and in fact freeriding on Complainant’s TIK TOK trademark’s fame. Such a use is incapable of conferring rights or legitimate interests in respect of the disputed domain name under the Policy. In essence, the Panel is unable to accept Respondent’s assertion that it was unaware of Complainant when it registered the disputed domain name. The Panel, therefore, finds Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element D. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. It is undisputed between the parties that Complainant’s TIK TOK and musical note trademarks and video-sharing platform enjoy considerable reputation throughout the world, including in the United States where Respondent is domiciled, notwithstanding Respondent’s contention that, at the time of registration of the disputed domain name, Complainant’s TIK TOK trademark was not a household name (a contention which does not appear to be borne out by the evidence). Respondent let the disputed domain name resolve to a website dominated by a prominent depiction of Complainant’s musical note logo, and also with a smaller logo comprising Complainant’s musical note followed by “TikTokTruck.com”; together with the following wording which obviously refers to Complainant’s services offered in the US market (and elsewhere) under the musical note logo and TIK TOK trademarks: “Welcome to TikTokTruck.com where making Mobile Content is EASY The content of Respondent’s website is a strong indication that Respondent was fully aware of Complainant and its musical note and TIK TOK trademarks when registering the disputed domain name. The Panel considers that, in particular, the wording “Inside a Fully Transparent Mobile Glass Cube” is a direct reference to Respondent’s mobile rental truck. Furthermore, the wording “If you are in/around NYC and want to schedule an appointment to make a Short-Form Video, send and email to ‘TikTokTruck@icloud.com’” suggests (1) Respondent’s knowledge of Complainant and its Short-Form Video services offered under Complainant’s musical note and TIK TOK trademarks; and (2) Respondent’s intention to do more than simply passively hold the disputed domain name (notwithstanding the fact the website was apparently not interactive). Also, using the latter on signs fixed on the glass walls of Respondent’s truck aiming at advertising Respondent’s truck rental business, again doing so by including Complainant’s musical note logo, strongly suggests that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website and related truck rental business by creating a likelihood of confusion with Complainant’s TIK TOK trademark as to the source, sponsorship, affiliation or endorsement of this website and related advertisement means. In this regard, the photographs annexed to the cease and desist letter from Complainant’s representatives (the veracity of which has not been contested by Respondent)2 suggest that one of the many advertised potential uses of Respondent’s mobile truck is for the creation of short form videos, or for performance, music and dance related services. Further, and perhaps more importantly, Respondent does not assert or even suggest that it was not responsible for the content of its website under the disputed domain name. To sum up, such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. While weighing the arguments for or against the finding of bad faith, the Panel has well-recognized Complainant’s view expressed in its cease and desist letter sent to Respondent on December 1, 2020, that it did not currently believe that Respondent was engaging in the mentioned unauthorized activities in a deliberate attempt to deceive consumers and trade on Complainant’s valuable reputation. Such view is in apparent contradiction to Complainant’s line of argumentation set forth in the Complaint. The Panel has in the circumstances concluded on the balance of probabilities that this “concession” was an attempt to appease Respondent and to solve this dispute amicably before filing the Complaint, and nothing more. Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). E. Reverse Domain Name Hijacking Finally, the Panel has considered whether it would be appropriate as per Respondent’s request to make the finding of Reverse Domain Name Hijacking against Complainant. Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that complainant has brought the complaint in bad faith (for example in an attempt of Reverse Domain Name Hijacking), or primarily to harass the domain name holder. The Rules define “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Thereafter, the Panel is not at all persuaded that the circumstances of this case justify the finding of Reverse Domain Name Hijacking. Apparently, there is no evidence whatsoever that Complainant was ill motivated in lodging the Complaint. Moreover, in fact it remains unanswered up until now as to why Respondent ever registered the disputed domain name if not to somehow financially profit from the reputation which Complainant’s TIK TOK trademark, that is reflected in the disputed domain name, enjoys. As indicated in this decision, the Panel concludes that Complainant had every reason to launch this Complaint to protect its reputation and goodwill in its mark. There is nothing before the Panel to suggest that the Complaint was brought in bad faith or to harass Respondent. Respondent’s request to find for a Reverse Domain Name Hijacking is rejected, as the Complaint was not brought 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 disputed domain name Stephanie G. Hartung Sebastian M.W. Hughes Tony Willoughby 1 It is evident from the case file that Whois Privacy, Private by Design, LLC, United States, is a privacy protection service and that Chris Bock, TikTok Truck, TikTokTruck, United States, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only. 2 While Respondent has leveled accusations against Complainant to the effect that Complainant has “doctored” photographs annexed to the Complaint, the Panel is satisfied that those allegations (as to which the Panel makes no finding) have no bearing on the substance of the Complaint.
You Choreograph Your Own Dance
You Sing Your Own Songs
You Play Your Own Instrument
Create Short-Form Music/Dance/Videos Unlike Anything On The Internet
Step Up /Step In / Start Recording
Let’s Chat
Making Short-Form Video/Dance/Music Content is not only Fun but Easy
Inside a Fully Transparent Mobile Glass Cube
You are The Producer, The Director & The Star
The Only Question is Do You Have What it Takes to Become the Next Viral Super Star Internet Sensation
New York City
If you are in/around NYC and want to schedule an appointment to make a Short-Form Video, send an email to ‘TikTokTruck@icloud.com’ & someone will get back to you promptly. Thank you for your interest in TikTokTruck.”
Presiding Panelist
Panelist
Panelist
Date: April 1, 2021
Full & Egal Universal Law Academy