Bytedance Ltd. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2111001974940
Complainant is Bytedance Ltd. (“Complainant”), represented by Paddy Tam of CSC Digital Brand Services AB, Sweden. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tiktok.sa.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to the Forum electronically on November 29, 2021; the Forum received payment on November 29, 2021.
On November 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <tiktok.sa.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On December 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2021, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tiktok.sa.com. Also on December 2, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
A timely Response was received and determined to be complete on December 3, 2021.
On December 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (“Rules”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Bytedance Ltd., together with its subsidiary, TikTok Information Technologies UK Limited, have rights in the TIK TOK mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. USPTO Reg. 5,653,614, registered Jan. 15, 2019). Respondent’s <tiktok.sa.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, omitting the space and adding the “.sa” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <tiktok.sa.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant permitted, authorized, or licensed Respondent to use its TIK TOK mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services because the domain name resolves to a website called “TikTok Store”, which offers online e-commerce or sales services, unrelated to Complainant’s business. Additionally, Respondent attempted to sell the disputed domain name to Complainant and other interested parties after its registration.
Respondent registered and/or uses the <tiktok.sa.com> domain name in bad faith. Respondent misappropriates Complainant’s TIK TOK trademark and attempts to trade on the goodwill associated with the mark for Respondent’s commercial benefit, although Respondent’s business does not compete with Complainant’s. Respondent initially registered the disputed domain name for eventual sale to the Complainant or other interested parties. Finally, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the TIK TOK mark based on the global fame of the mark and Respondent’s own admission that Respondent initially approached complainant right after registering the disputed domain name with the intention of selling the domain name to Complainant.
B. Respondent
Respondent submitted a response in this proceeding. The response was largely deficient in form and substance. Respondent provided a piece of correspondence that made a series of statements blaming Complainant for not returning Respondent’s emails. Respondent allegedly sent emails outlining plans for building a website that was reachable via use of Complainant’s trademark in the site’s domain name, and Complainant’s lack of response allegedly caused Respondent to incur unnecessary expenses in constructing that site.
Respondent further stated that Respondent would agree to transfer the domain name if Complainant refunds the out-of-pocket expenses Respondent allegedly incurred for the design expenses related to establishing Respondent’s website.
Complainant is Bytedance Ltd. (“Complainant”), of Grand Cayman, Cayman Islands. Complainant is the owner of numerous domestic and international registrations for the marks TIKTOK and TIK TOK, which it has continuously used since at least as early as 2017 in connection with its networking apps, goods, and services. Complainant also maintains a significant internet presence at its primary website found at <tiktok.com>.
Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf (“Respondent”), International. Respondent’s address is indicated as Reykjavik, Iceland. Respondent’s registrar’s address is indicated as Phoenix, AZ, USA. The Panel notes that the <tiktok.sa.com> domain name was registered on or about February 18, 2021.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims rights in the TIK TOK mark through its registrations with the USPTO (e.g. Reg. 5,653,614, registered Jan. 15, 2019). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tiktok.sa.com> domain name is identical or confusingly similar to Complainant’s TIK TOK mark. Under Policy ¶ 4(a)(i), removing the space between the words of the mark and adding both a ccTLD and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see additionally See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017)(finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD).
In the instant proceeding the disputed domain name incorporates the TIK TOK mark in its entirety, with the omission of space between “tik” and “tok” and the addition of the “.sa” ccTLD and the “.com” gTLD. The Panel here finds that Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent is not commonly known by the <tiktok.sa.com> domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information, or lack thereof when hidden behind a privacy service, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never permitted, authorized, or licensed Respondent to use its mark in the disputed domain name. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record lists “Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf” for registrant, and Respondent provides no evidence, nor was anything indicated in the record, that rebuts Complainant’s assertion that it never permitted, authorized, or licensed Respondent to use its TIK TOK mark in the disputed domain name. Therefore, the Panel here finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the <tiktok.sa.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because the domain name resolves to a website called “TikTok Store”, which offers online e-commerce or sales services, unrelated to Complainant’s business. Use of a complainant’s trademark to divert Internet users to respondent’s website for an unrelated commercial purpose does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use….The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”); see additionally Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”). Here, Complainant provides screenshots of Respondent’s website, which is a commercial website unrelated to Complainant’s business. Respondent’s website also links to an Instagram account (“tiktoksaudia”) and a Google Play Store apps (“TikTok Store”), which incorporate Complainant’s TIK TOK trademark. Complainant contends that these incidents indicate Respondent’s general intent to profit from the reputation and goodwill of Complainant’s TIK TOK brand. The Panel here finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Additionally, Complainant argues that Respondent lacks rights and legitimate interests because Respondent attempted to sell the disputed domain name to Complainant and other interested parties after its registration. Offering the domain name for sale to complainant and other interested parties does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Forum May 27, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the complainant); see additionally Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”). Here, Complainant provides screenshots of Respondent’s correspondence, where Respondent offers to sell the <tiktok.sa.com> domain name to Complainant and relates that a third party is also interested in buying the domain name. The Panel here finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered or uses the <tiktok.sa.com> domain name in bad faith because Respondent misappropriates Complainant’s TIK TOK trademark and attempts to trade on the goodwill associated with the mark for Respondent’s commercial benefit, although Respondent’s business does not compete with Complainant’s. Use of the complainant’s mark in the title of the website under the disputed domain name and using the website for a commercial purpose that is not necessarily competitive may be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see additionally H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). The Panel here again notes that Complainant provides screenshots of Respondent’s commercial website under the domain name, entitled “TikTok Store” which sells products unrelated to Complainant’s business. Respondent’s website also has linked to an Instagram account (“tiktoksaudia”) and a Google Play Store app (“TikTok Store”) that both incorporate Complainant’s TIK TOK trademark. The Panel here finds Respondent has engaged in bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered or uses the <tiktok.sa.com> domain name in bad faith because Respondent initially registered the disputed domain name for eventual sale to the Complainant or other interested parties. Under Policy ¶ 4(b)(i), bad faith has been found where the evidence shows that the respondent registered the disputed domain name primarily for the purpose of selling it to the complainant or interested third parties. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see additionally Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
In the present matter Complainant provides screenshots of Respondent’s correspondence, where Respondent explains that it has reached out to Complainant several times to ask if Complainant was willing to buy the <tiktok.sa.com> domain name. Respondent indicates that it is still willing to cancel its business and sell the disputed domain name to Complainant. Complainant maintains that it does not wish to compensate Respondent’s acts of bad faith registration. The Panel here finds bad faith registration and use by the Respondent under Policy ¶ 4(b)(i).
Finally, Complaint argues that Respondent registered the <tiktok.sa.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the TIK TOK mark based on the global fame of the mark and Respondent’s own admission that Respondent initially approached complainant right after registering the disputed domain name with the intention of selling the domain name to Complainant. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of the mark as well as evidence at the time of respondent’s registration. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Amazon Technologies, Inc. v. nikhil garg, FA2103001935625 (Forum Apr. 1, 2021) (finding that Respondent registered and used the disputed domain names with actual knowledge of Respondent’s trademark, due to the prominence of the KINDLE mark); see additionally Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see additionally Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Here, Complainant alleges and provides evidence that its TIK TOK mark is famous, namely, that Complainant’s apps product was the most downloaded application in the U.S. in October 2018, with more than 500 million users having downloaded Complainant’s TikTok app. Complainant’s also provides evidence of Respondent’s correspondence, where Respondent admits to offering the <tiktok.sa.com> domain name to sell to Complainant. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the TIK TOK mark, and therefore engaged in bad faith registration pursuant to Policy ¶ 4(a)(iii).
Respondent alleges that before registering the domain name, it had reached out repeatedly to Complainant to ask for approval but did not receive a response. Under Policy ¶ 4(a)(iii), bad faith registration and use may not be found where there is insufficient evidence of respondent’s bad faith. See MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Forum May 9, 2003) (Panelist David Sorkin, dissenting) (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.”); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register the disputed domain name in bad faith where it “registered the Domain Name with the full consent and knowledge of Complainant” and therefore “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”). Here, Respondent has not provided any evidence of Complainant’s consent to use its mark. To the contrary, Respondent indicates that Complainant did not respond to emails Respondent allegedly sent regarding contemplated use of Complainant’s mark. Instead, Respondent admits that despite knowledge of Complainant’s rights it used Complainant’s mark without authorization.
Respondent also argues that to transfer the domain name, it only requested that Complainant refund the out-of-pocket expenses for the design expenses and advertisement for Respondent’s content on the website. However, Complainant refused the request. Under Policy 4(b)(i), the respondent does not evince bad faith intent to sell when the respondent did not ask for more than the reimbursement of its out-of-pocket cost. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (refusing to transfer the domain name where the complainant fails to prove that the consideration in the respondent's offer of transfer is in excess of the respondent's out-of-pocket costs directly related to the domain name); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Forum June 17, 2002) (finding that the respondent’s statement that it did not intend to create harm or confusion and its offer to relinquish the disputed domain names in exchange for reimbursement of its out-of-pocket costs was evidence that the respondent was not acting in bad faith); see additionally Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”). However, a Respondent cannot knowingly use another’s mark without any authorization in order to create a website and then request payment for the costs incurred. A mark owner has no duty to respond to another party inquiring about infringing the mark holder’s rights as a prospective infringer acts at its own peril.
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tiktok.sa.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 24, 2021
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