The Complainant is Bytedance Ltd., Cayman Islands, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Dori BIK, Israel, self-represented.
The disputed domain name <contact-tiktok.com> (the “Disputed Domain Name”) is registered with CloudFlare, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 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 March 23, 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 March 25, 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 March 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2021. The Response was filed with the Center on April 23, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 29, 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.
The Complainant, together with its subsidiary, TikTok Information Technologies UK Limited, own and operate a global social media platform that was launched in May 2017. The Complainant has consistently used this platform at least since 2017 in conjunction with a wide range of services, including advertisement services, downloadable software, clothing, and other entertainment-related services such as provision of non-downloadable music videos over communications networks. The Complainant’s platform is well-known, particularly in the social media industry and is available in more than 150 different markets and in 75 languages.
Among others, the Complainant owns the following trademark registrations:
- TIKTOK, United States Trademark Registration No. 5,653,614, registered on January 15, 2019, in international classes 9, 38, 41, and 42;
- TIKTOK, United States Trademark Registration No. 5,974,902, registered on February 4, 2020, in international classes 9, 38, 41, and 42;
- TIKTOK, United States Trademark Registration No. 5,981,212, registered on February 11, 2020, in international classes 9, 38, 41, and 42;
- TIKTOK, European Union Trademark Registration No. 017913208, registered on October 20, 2018, in international classes 9, 25, 35, 42, and 45; and
- TIKTOK, International Trademark Registration No. 1485318, registered on March 19, 2019 in international classes 9, 35, 38, 41, 42, and 45 (designating various jurisdictions, including Israel, where the Respondent allegedly resides).
The aforementioned trademarks will hereinafter collectively be referred to as the “TIKTOK Mark”.
Aside from the above listed TIKTOK Mark, the Complainant also owns TIKTOK design marks or logos and all are either registered or pending registration in multiple jurisdictions internationally, including in Israel, the United States, and the European Union.
The Disputed Domain Name was registered on October 16, 2020, and resolved to a website created by the Respondent. The website contained contact information about various employees and officers of the Complainant in Israel, including their names, personal phone numbers, and even links to their personal social media accounts. It also displays the Complainant’s TIKTOK Mark, including the Hebrew transliteration of that mark. Further, the resolving website contained copyrighted materials featured on the Complainant’s official website, including designs, graphics, logos, and the overall “look & feel” of the Complainant’s website. The Complainant provided screenshots of pages of the website as evidence of the Respondent’s use of the Disputed Domain Name.1
In addition, the Respondent’s website, which is available in Hebrew, allegedly includes various false, unfounded and baseless statements, and defamatory accusations regarding the Complainant’s social media platform.
On January 17, 2021, the Complainant sent a cease-and-desist letter through the Respondent’s privacy service provider, to which the Registrar and hosting services provider of the Disputed Domain Name was copied, and received a response from it the same day, stating that it could not assist in the matter. No response was received from the Respondent.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The following are the Respondent’s contentions:
- the Respondent admits that the Disputed Domain Name is similar to the Complainant’s trademark;
- the Respondent is an Israeli activist, blogger, and freelancer;
- the Respondent’s work for the past 12 years has been to educate people about the negative impact that social media platforms have on the population, the economy, data privacy, and humanity;
- the Respondent registered the Disputed Domain Name to create a website to protest the use of social media platforms and to critique and/or make disparaging comments about them;
- the Respondent respects the trademarks it critiques;
- the Respondent’s website is a protest website in Hebrew that provides contact information for the Complainant’s local management personnel and employees, along with relevant content and news;
- the Respondent created a website that is well known by the Israeli public as an unofficial, protest website;
- the Respondent claims that everything that is written on the website to which the Disputed Domain Name resolves is within legitimate and acceptable boundaries of criticism, free speech, and fair use;
- the Respondent acknowledges that the Complainant did not authorize the use of its trademarks;
- the Respondent contends that only visitors from Israel and Palestine can access the Disputed Domain Name;
- the Disputed Domain name was not registered in bad faith, but only as part of the Respondent’s public activism;
- the Respondent did not gain any personal or financial benefit from the use of the Disputed Domain Name; and
- the Respondent did not offer to sell the Disputed Domain Name to the Complainant.
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the TIKTOK Mark.
It is uncontroverted that the Complainant has established rights in the TIKTOK Mark based on its several years of use as well as its registered trademarks for the TIKTOK Mark in the United States, the European Union, and other jurisdictions worldwide. The general consensus is that registration of a mark is prima facie evidence of validity. The Panel finds that the Complainant has rights in the TIKTOK Mark.
The Disputed Domain Name consists of the TIKTOK Mark in its entirety preceded by and joined to the term “contact” by a hyphen, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a word to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well-established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel considers that the Disputed Domain Name is confusingly similar to the Complainant’s TIKTOK Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. While the Respondent has attempted to rebut the Complainant’s prima facie case, the Respondent has not rebutted the fact that the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its TIKTOK Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to redirect Internet users to the Respondent’s website, which copies the content, color, and trademarks of the Complainant, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent was using the Disputed Domain Name to defame and criticize the Complainant using the Complainant’s own TIKTOK Mark to do so, and thus, the Respondent was not using the Disputed Domain Name to for any acceptable fair use.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s TIKTOK Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s TIKTOK Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.
Second, the Disputed Domain Name was registered after the Complainant first began using its TIKTOK Mark. It is obvious that the Respondent had the Complainant’s well-known TIKTOK Mark in mind when registering the Disputed Domain Name.
Third, the Panel concludes that the Respondent has engaged in a pattern of registering domain names that contains the registered trademarks of well-known third parties which is evidence of bad faith registration. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registrations. Here, the Respondent admits that it also registered the domain names of other social media platforms, including <contact-facebook.com>, and is planning to register <contact-instagram.com> for the same purpose for which it registered the TIKTOK Mark, that is to create a website copying the official Facebook or Instagram website to critique those platforms. The Respondent is part of several activist and protest groups, and non-profit organizations whose objective is to raise awareness and minimize the negative impact that multi-national corporations and social media platforms such as Google, Facebook, Twitter, and TIKTOK impose on the population, and to expand the conversation to include social media’s impact on the economy, humanity, data privacy, lack of transparency, and freedom of the press. The manner of the Respondent’s use of the Disputed Domain Name however exceeds that stated purpose.
The Panel agrees with the Complainant that the Respondent is using the Disputed Domain Name to harass, disparage and defame the Complainant, and to disrupt its business by taking advantage of the fact the Internet users seeking the Complainant’s website are likely to reach the Respondent’s website. Such action is intended to deter potential customers of the Complainant from doing business with the Complainant and to tarnish and disrupt the Complainant’s business, which conduct is emblematic of bad faith. It strains credulity to accept that the Respondent actually believes that its negative, damaging rhetoric was not done in bad faith, and that it constitutes legitimate criticism.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <contact-tiktok.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: May 10, 2021
1 As of the writing of this Decision, however, the Disputed Domain Name resolves to an error page hosted by the Registrar that states: “This website is using a security service to protect itself from online attacks.”