Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Lawal Babatunde, Nigeria.
The disputed domain name <tiktokfans.co> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 30, 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 Complainant on January 4, 2021 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 5, 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 Respondent of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 16, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on March 9, 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.
Complainant is an Internet technology company that owns a series of content platforms and applications. TIKTOK is Complainant’s application (“app”) for its video sharing social networking services. The app was launched outside China in May 2017 and shortly afterwards became the most downloaded application in the United States of America (“United States”) in October 2018. The app allows users to create videos and connect clips together. It 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 app. The app is ranked as “#1 in Entertainment” in the Apple Store and “#3 in Social” on Amazon. Complainant also has a large Internet presence through its primary website “www.tiktok.com”. According to SimilarWeb.com, the app had a total of 493.03 million visitors, ranking 44th globally and 67th in the United States in the 6-month period between April and September 2020. In the app, each user account or profile can be followed by “fans”.
Per Complaint, Complainant’s TIK TOK brand is well recognized worldwide. Complainant has made significant investment to advertise and promote the TIK TOK brand in media and the Internet over the years.
Complainant together with its subsidiary is the owner of various trademark registrations for TIK TOK, including United States trademark registration No. 87888634, TIK TOK (word), filed on April 23, 2018, registered on January 15, 2019, for goods in international class 9.
The Domain Name was registered on December 6, 2019, and resolves to a website (the “Website”) prominently displaying Complainant’s TIK TOK trademarks and logos, offering users to “Get Free TikTok Fans, The Easy Way”, an offering which per Complainant is contrary to the app’s Terms of Service.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Complainant has demonstrated rights through registration and use on the TIK TOK mark.
The Panel finds that the Domain Name is confusingly similar to the TIK TOK trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word “fans”, which is added in the Domain Name is a dictionary term, and does not prevent a finding of confusing similarity, as the TIK TOK mark remains clearly recognizable (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The country-code Top-Level Domain (“ccTLD”) “.co” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the TIK TOK trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name resolves to a Website containing content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an official partner of Complainant.
Per Complaint, Respondent is not an affiliated entity or an authorized partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.
Noting that the term “fans” is clearly connected with the Complainant’s app (as each user account or profile can be followed by “fans”), in this case, the Panel finds that the Domain Name suggests that it is an official site of Complainant or affiliated to or endorsed by Complainant, an impression which is affirmed by the Website, as it extensively reproduces without authorization by Complainant, Complainant’s trademark.
Furthermore, as Complainant demonstrated, the Website invites users to a conduct that is against Complainant’s Terms of Service, namely to get “Free TikTok Fans” (Facebook, Inc. and Instagram, LLC v. Adam Szulewski, WIPO Case No. D2016-2380).
Lastly, use that intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016‑2416, and WIPO Overview 3.0, section 2.8).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established the requirements under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s TIK TOK trademark is well known. Because the TIK TOK trademark has been used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (see Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, provided also online and through mobile phone applications (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
The Domain Name fully incorporates Complainant’s distinctive brand TIK TOK. This indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry. It alsofurther supports registration in bad faith, reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name and its website as connected with Complainant (WIPO Overview 3.0, section 3.1.4).
As regards bad faith use, Respondent is using the Domain Name to resolve to the Website displaying Complainant’s trademark and logotype, without Complainant’s authorization and gives the false impression of being operated by Complainant or an entity affiliated to Complainant or an official partner of Complainant. The Domain Name is therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website it resolved to.
Furthermore, the Website is offering “Free TikTok Fans”, in violation of TIKTOK’s Terms of Service (Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Yan Jiang and Whois Domain Admin / Li Dan, WIPO Case No. D2020-2092), whereas, as Complainant demonstrated, Respondent has also registered another identical domain name, namely <tiktokfans.us> on November 24, 2018.
Lastly, the Domain Name was registered with a privacy shield service to hide the registrant’s identity, which constitutes further indication of bad faith (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <tiktokfans.co> be transferred to Complainant.
Date: March 23, 2021
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