The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Tanawut Sangsawang, Thailand.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, 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 July 21, 2021, 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 July 23, 2021.
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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2021.
The Center appointed Theda König Horowicz as the sole panelist in this matter on September 6, 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 BackgroundThe Complainant belongs to a group of companies owning trademarks for TIK TOK. The Complainant is in particular the owner of the United States of America (“U.S.”) Trademark Registration “TIK TOK” No. 5653614, in international classes 9, 38, 41 and 42, registered on January 15, 2019.
The Complainant is an Internet technology company, which develops and commercializes systems enabling users to access content platforms. On these platforms, people can connect through a machine learning technology. One of these platforms is TIK TOK, which was launched in May 2017 and which became the most downloaded application in the U.S. in October 2018. TIK TOK enables users worldwide to create and upload short videos. It offers features such as background music and augmented reality effects.
The disputed domain name was registered on November 26, 2019. It resolved to a website containing statements such as: “Boost your TikTok presence instantly”, “Our TikTok deals”, “Get more of your TikTok profile”, “TikTok followers”, “TikTok Likes”, “TikTok followers and likes packages” etc. The website also gives the possibility to Internet users to buy packages of TikTok followers, views or comments.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that it holds trademark rights into TIK TOK. The disputed domain name entirely reproduces this trademark and the mere addition of the term “palace” does not negate the confusing similarity with the Complainant’s trademark. The Respondent’s omission of space between “TIK” and “TOK” does nothing to distinguish the disputed domain name from the Complainant’s trademark. The content of the website linked to the disputed domain name adds to the confusing similarity.
The Complainant states that the Respondent is not sponsored or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s trademark in any manner including in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The name of the Respondent does not resemble the disputed domain name in any manner and the Respondent used a privacy WhoIs service so as to remain anonymous. The Respondent is not making a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name. Indeed, the disputed domain name was linked to a website including a variation of the Complainant’s musical note logo and imitating the Complainant’s brand image. The website linked to the disputed domain name also specifically refers to TIK TOK by offering TIK TOK likes, followers, views in contravention to the Complainant’s terms of service.
In addition, the Complainant notes that the disputed domain name was registered after the TIK TOK trademark was used in 2017. The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s trademark. The Respondent thus knew of the TIK TOK brand and business when registering the disputed domain name. The content of the website linked to the disputed domain name also shows that the disputed domain name is used in bad faith. The Respondent creates a likelihood of confusion with the Complainant and its trademark, particularly since the website to which the disputed domain name contains statements such as that it would offer “genuine, high quality followers and views using discrete and reliable technology”. Internet users are thus led to believe that the Respondent is somehow associated with the Complainant which is not the case. The Respondent is using the fame of the Complainant’s trademark and brand to improperly increase traffic to its website. Moreover, the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business. The use of a privacy service to register the disputed domain name is another evidence of bad faith registration and use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in 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 SimilarThe Complainant showed to have trademark rights in TIK TOK through at least one U.S. trademark registration.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where the disputed domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the disputed domain name, the disputed domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name contains TIK TOK in its entirety. The mere addition of the term “palace” does not prevent a finding of confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.
The Complainant makes several statements showing that it never allowed the Respondent to use the trademark TIK TOK by any means whatsoever and that the Respondent would not have any rights in the name TIK TOK or would be known by it.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.
The Respondent has chosen not to reply. The Panel also notes that the disputed domain name was used in a way to create a risk of confusion in the public’s mind as to the origin of the website. As a matter of fact, the content of the website to which the disputed domain name resolved reproduced without authorization some features widely used by the Complainant including the trademark TIK TOK. It also contained several statements containing the TIK TOK trademark and providing the possibility to order against payment TikTok followers, views etc. By doing so, the Respondent falsely gave the impression that its website was an official emanation of the Complainant or was associated with it. It was thus likely to divert Internet users for commercial gain, which is not a legitimate use of the disputed domain name under the Policy.
Consequently, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant has shown that its TIK TOK trademark was notably registered in the U.S.. There is no doubt over the fact that the Complainant’s trademark has been widely used worldwide since 2018 as an application and in social media. The Complainant’s TIK TOK brand obviously gained a high level of popularity in a very short period of time.
Hence, the Panel finds that the Respondent who registered the disputed domain name end of 2019 thus knew or should have known of about the Complainant’s trademark and deliberately registered the disputed domain name (see WIPO Overview 3.0, section 3.2.2).
The manner in which the disputed domain name was used is a classic case of bad faith use since the website to which it was resolving was displaying features used by the Complainant and in particular its mark TIK TOK. The layout of the website in particular gave the deceptive impression of a potential collaboration between the Complaint and the Respondent.
The Panel further notes that the Respondent registered the disputed domain name via a privacy service and has chosen to remain silent within this proceeding, which are further indications of bad faith.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Theda König Horowicz
Sole Panelist
Date: September 20, 2021