The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Дубинин Алексей Сергеевич / Dubinin Alexey, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 June 16, 2020 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on June 17, 2020 in this regard. On June 16, 2020, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Russian, and inviting the Parties to submit their preference as to the language of the proceeding. On June 17, 2020, the Complainant submitted its request that English be the language of the proceeding. The Center verified that the Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”) the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was July 20, 2020. The Center appointed Ganna Prokhorova as the sole panelist in this matter on August 6, 2020. 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant is a Chinese Internet technology company with a legal domicile in the Cayman Islands, United Kingdom. It owns a series of content platforms that enable people to connect with consuming and creating content through machine learning technology, including Toutiao, Douyin, and TikTok. The Complainant (together with its subsidiary, TikTok Information Technologies UK Limited) owns trademark registrations for TIK TOK in various jurisdictions, i.e. TIK TOK including International Registration No. 1485318 as of March 19, 2019, and inter alia designating Ukraine, for Classes 9, 25, 35, 38, 41, 42, 45, TIK TOK under European Union Registration No. 017913208 as of October 20, 2018 for Classes 9, 25, 35, 42, 45, and TIK TOK under United States of America Registration No. 5653614 as of January 15, 2019 for Classes 9, 38. 41, 42. The Complainant has engaged in significant advertising and promotion of its TIK TOK trademarks, including on the Internet and other media. The Respondent registered the disputed domain name on May 17, 2019. At the time of the Decision, the disputed domain name directs to a website offering search engine optimization (SEO) and similar services. 5. Parties’ Contentions A. Complainant The Complainant is an Internet technology company that enables users to discover a world of creative content platforms powered by leading technology. It owns a series of content platforms that enable people to connect with consuming and creating content through machine learning technology, including Toutiao, Douyin, and TikTok. TikTok was launched outside China in May 2017 and became the most downloaded application in the United States in October 2018. TikTok is available in more than 150 different markets, in 75 languages, and has become the leading destination for short-form mobile video. In Google Play, more than 500 million users have downloaded the TikTok app. The app is ranked as “#1 in Entertainment” in the Apple Store and “#3 in Social” in Amazon. The Complainant also has a large Internet presence through its primary website “www.tiktok.com”. The Complainant and its TIK TOK trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 2017, which is well before the Respondent’s registration of the Disputed Domain Name on May 17, 2019. The Complainant submits that the disputed domain name is identical to the Complainant’s TIK TOK trademark. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant adds that there is no evidence of the Respondent’s use or preparations to use the disputed domain name for a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain name, or that the Respondent has any legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges that the disputed domain name was registered and/or is being used in bad faith. The Complainant seeks a decision that the domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement for the disputed domain name is Russian. However, as noted by previous .UA panels, paragraph 11 of the .UA Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the .UA Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., Chewy Inc v. Rostislav Karyi / Ростислав Карый,WIPO Case No. DUA2020-0003). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, or to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. The Complainant has filed the Complaint in English and requested English to be the language of this proceeding based on the following grounds: (1) the Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; (2) such additional delay, considering the obviously abusive nature of the disputed domain name and its website, poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products or services; (3) the disputed domain name is comprised of Latin characters “tiktok,” which presumes that the Respondent has some understanding of the English language; (4) the term TIKTOK, which is the only composition of the disputed domain name, does not carry any specific meaning in the Russian language; (5) in light of the Respondent’s use of the disputed domain name and the Respondent’s decision to register a domain name that misappropriates the famous TIK TOK trademark and brand, it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to addressing this instance of abuse. The Respondent has not provided any arguments or supporting materials as to why the proceedings should not be conducted in English. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present his objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known his preference but did not do so. The Panel is proficient in both Russian and English. The Panel noted that the Respondent did not provide any arguments or supporting materials as to why the proceedings should not be conducted in English. The Panel also notes that the Center has sent all of its email communications to the Parties in both languages English and Russian. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complainant is ordered to translate its filing. Therefore, the Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002; Chewy Inc. v. Rostislav Karyi/Ростислав Карый,WIPO Case No. DUA2020-0007). Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. 6.2. Substantive Issues In accordance with paragraph 4(a) of the .UA Policy, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered or is being used in bad faith. The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions (Google LLC v. Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009). However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the registered trademark TIK TOK. According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. Therefore, the Panel should confirm that the Complainant has satisfied the threshold requirement of having relevant trademark rights first. The Complainant (together with its subsidiary, TikTok Information Technologies UK Limited) is the owner of the trademark registrations for TIK TOK in various jurisdictions, i.e. TIK TOK under International Registration No. 1485318 registered on March 19, 2019, designating, in particular, Ukraine for Classes 9, 25, 35, 38, 41, 42, 45, TIK TOK under European Union Registration No. 017913208 registered on October 20, 2018, for Classes 9, 25, 35, 42, 45, and TIK TOK under United States of America Registration No. 5653614 registered on January 15, 2019, for Classes 9, 38. 41, 42. By virtue of these trademark registrations, the Complainant has rights in the TIK TOK trademark and, thus, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a case under the .UA Policy. It is standard practice when comparing a disputed domain name to a complainant’s trademark, to not take the Top-Level-Domain (“TLD”) extension into account. See Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002. The second level domain of the disputed domain name consists solely of the Complainant’s TIK TOK trademark, resulting in a domain name that is identical to the Complainant’s TIK TOK trademark and thus meeting the requirements under paragraph 4(a)(i) of the .UA Policy. See AB Electrolux v. Захаров Евгений,WIPO Case No. DUA2020-0006. The Respondent’s omission of the space between “tik” and “tok” does not prevent the Complainant’s TIK TOK trademark from being recognizable within the disputed domain name. In other words, the elimination of the space does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark and may be disregarded for purposes of making such determination. See Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002 (“Save for the lack of a space between “michael” and “kors”, which it is not possible to incorporate as a consequence of the technical limitations of the Domain Name System, the Panel finds the disputed domain name is identical to the Complainant’s well-known MICHAEL KORS trademark.”). Additionally, the Respondent’s use of the disputed domain name affirms the Panel’s finding of confusing similarity. The Respondent is using the disputed domain name to pass off as the Complainant by copying the Complainant’s TIK TOK trademark and music note logo on the disputed domain name’s website, using the Complainant’s music note logo as a favicon, and purportedly offering TikTok Ads (advertisements). At the bottom of the disputed domain name’s website, the Respondent is also misrepresenting itself as “TikTok Ukraine.” As such, the Respondent’s use of the disputed domain name suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion. Although the content is usually disregarded under the first element, in previous cases Panels have allowed “the content of the website associated with a domain name to confirm confusing similarity where it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.15 1. As a result, the Respondent’s use of the disputed domain name to resolve to a website which creates an impression that it is an authorized website by the Complainant affirms the Panel’s finding that the disputed domain name is confusingly similar to the Complainant’s trademark. Based on the foregoing, the disputed domain name is clearly identical to the Complainant’s TIK TOK trademark. In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the .UA Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the .UA Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While the overall burden of proof in .UA proceedings is on the complainant, the Panel recognizes 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, e.g. LEGO Juris A/S v. Anton Obrezkov,WIPO Case No. DUA2020-0001). The Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent permission, authorization or license to use the Complainant’s trademark in any manner, including in domain names. As established by other .UA Panels, in the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. In the instant case, there is no evidence, including the WhoIs record for the disputed domain name, which suggests that the Respondent is commonly known by the disputed domain name. In the circumstances, the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii) of the .UA Rules. The Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain name. The disputed domain name redirects Internet users to a website which creates the impression that it is an authorized site by thr Complainant. The Respondent prominently displays the Complainant’s logo on the website as well as uses the Complainant’s logo as a favicon. Such inclusions of the Complainant’s logo are direct efforts to take advantage of the fame and goodwill that the Complainant has built in its brand, and the Respondent is not only using an identical disputed domain name, but is also imitating the Complainant by displaying the Complainant’s logo. This imitation is referred to as “passing off”. Therefore, the Panel finds that the Respondent uses a confusingly similar domain name to mislead the Complainant’s customers which is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the .UA Policy or a legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the .UA Policy. Further, the Panel finds that the Respondent uses the disputed domain name to offer or attempt to offer TikTok Ads, which the Complainant offers at “https://ads.tiktok.com”. Thus, the disputed domain name and its associated website give the false impression of being that of an authorized reseller or vendor of the Complainant. Causing a false and misleading representation such as this is not apt to vest rights or any legitimate interests in the Respondent. Rather, it represents an illegitimate attempt to draw financial advantage from the false impression of some legitimate relationship between the Complainant and the disputed domain name. Moreover, the Panel agrees that the Respondent cannot claim nominative fair use of the disputed domain name because the Respondent’s use does not meet the criteria in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The criteria laid down in this case and described in WIPO Overview 3.0 at section 2.8.1 (the Oki Data Test) have been widely adopted and cited by Panels to address “the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name.” The Oki Data Test has also been repeatedly applied by Panels in the context of unauthorized resellers. Here, the Respondent is not an authorized sale or service agent for the Complainant, and the Respondent’s use of the disputed domain name fails to meet the third criterion of the Oki Data Test, which requires the website to accurately disclose the Respondent’s relationship with the Complainant. The website found at the disputed domain name has no visible disclaimer stating that the website is neither endorsed nor sponsored by the Complainant to explain the non-existing relationship with the trademark holder. Instead, the Respondent is (mis)representing itself as “TikTok Ukraine”, conveying the false impression that the Respondent was authorized to use the Complainant’s trademark and offer the Complainant’s services (see also LEGO Juris A/S v. Anton Obrezkov,WIPO Case No. DUA2020-0001). The Respondent registered the disputed domain name on May 17, 2019, which is after the Complainant filed for registration of its TIK TOK trademark, and after the Complainant’s first use in commerce of its trademark in 2017. The disputed domain name’s registration date is also after the Complainant obtained its Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith According to paragraph 4(a)(ii) of the .UA Policy it should be established that the disputed domain name has been registered or is being used in bad faith. Although it is sufficient to prove registration of the disputed domain name or its use in bad faith, the Panel is convinced that the Respondent has both registered and is using the disputed domain name in bad faith. The Complainant and its TIK TOK trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 2017, which is well before the Respondent’s registration of the disputed domain name on May 17, 2019. By registering a domain name that is an exact match of the Complainant’s TIK TOK trademark (minus the space), the Respondent has created a domain name that is identical to Complainant’s trademark, as well as the Complainant’s Further, the disputed domain name resolves to a website that features the Complainant’s TIK TOK trademark and music note logo while allegedly offering TikTok Ads. In light of these facts, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s trademark and brands at the time the disputed domain name was registered (see Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Stated differently, TIK TOK is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,...its very use by someone with no connection with the products suggests opportunistic bad faith” (see Parfums Christian Dior v. Javier Garcia Quintas, WIPO D2000-0226). Further, since the disputed domain name is identical to the Complainant’s TIK TOK trademark (minus the space), the Panel believes that Respondent intentionally selected the disputed domain name with the Complainant and its trademark in mind. The .UA Policy dictates that bad faith can be established by evidence that demonstrates that “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site..., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondent’s] web site or location” (paragraph 4(b)(iv) of the .UA Policy).Here, the Respondent creates a likelihood of confusion with the Complainant and its trademark by registering a confusingly similar domain and then using it to host a website displaying the Complainant’s TIK TOK trademark and logo in a brand-like manner, with the Respondent then attempting to profit from such confusion by offering TikTok Ads. As such, the Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the disputed domain name and its website would cause consumers to believe the Respondent is somehow associated with the Complainant when, in fact, it is not. The Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and the Respondent is thus using the fame of the Complainant’s trademark and logo to improperly increase traffic to the website listed at the disputed domain name for the Respondent’s own commercial gain. It is well established that such conduct constitutes bad faith (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Respondent’s use of the disputed domain name also constitutes a disruption of the Complainant’s business because the Respondent’s domain name is identical to the Complainant’s trademark and the website at the disputed domain name is being used to offer the Complainant’s TikTok Ads without the Complainant’s authorization or approval. Past .UA Panels have confirmed that using a confusingly similar domain to mislead consumers and then offering a complainant’s goods or services is evidence of bad faith registration and use (see Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002). Thus, the Panel finds that the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and the disputed domain name must be considered as both having been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the .UA Policy, with no good faith use possible. Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith. All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Ganna Prokhorova 1 Given the many similarities between the terms of the .UA Policy and the terms of the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
Sole Panelist
Date: August 20, 2020
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