The TikTok brand is a popular but wacky social media platform. It just so happens that TIKTOK is a registered trademark and Bytedance is very protective of its brand.
But this is not about president Donald Trump’s animosity towards the Chinese-owned platform, it’s about the UDRP against the domain TikTok.fail – a searchable offsite repository of TikTok videos.
As expected, the Respondent in this case lost the UDRP, so which domain name did they move to?
Tik.fail.
We aren’t sure if Bytedance will be amused by this. Read the full decision on TikTok.fail below:
Bytedance Ltd. v. Alexey Dostoevsky, Dystopia Group
Case No. D2020-24271. The Parties
The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Alexey Dostoevsky, Dystopia Group, Cayman Islands, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <tiktok.fail> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 18, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2020. On September 24, 2020, the Center received an email communication from “[…]@tiktok.fail” indicating the Respondent would transfer the Domain Name to the Complainant. On September 25, 2020, the Center informed the Parties of the possibility to suspend the proceedings to explore settlement options. On September 28, 2020, the Complainant informed the Center that it would like to proceed with the case. On October 2, 2020, the Center received a communication from “[…]@pepega.icu” offering to transfer the Domain Name to the Complainant to which the Center replied on October 5, 2020.
The Respondent did not submit any formal response. Accordingly, the Center informed the parties that it would proceed to panel appointment on October 21, 2020.
The Center appointed Dawn Osborne as the sole panelist in this matter on October 21, 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 Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of the trade mark TIK TOK, registered, inter alia, in the United States of America (“USA”) as trade mark registration no 5653614 from January 15, 2019, first use recorded as in 2017 and 2018.
The Domain Name registered on February 7, 2020 has been used for a site using the Complainant’s logo which allows users to download and mirror content from the Complainant’s site in breach of the Complainant’s terms and conditions.
5. Parties’ Contentions
A. Complainant
The Complainant is the owner of the trade mark TIK TOK, registered, inter alia, in the USA as trade mark registration no 5653614 from January 15, 2019, first use recorded as in 2017 and 2018. It has a logo which looks like a musical note.
The Domain Name registered in 2020 is identical to the Complainant’s TIK TOK trade mark registration for the purposes of the Policy merely adding the generic Top-Level-Domain (“gTLD”) “.fail”.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name is being used for a site that allows uses to download and mirror content from the Complainant’s site using the Complainant’s name and logo deceiving users and in breach of the Complainant’s terms of service. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith diverting Internet users for commercial gain and disrupting the Complainant’s business with actual knowledge of the Complainant, its mark, rights and business.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s TIK TOK mark (which has been registered, inter alia, in the USA for online services allowing users to upload content since 2019) and the gTLD “.fail”.
The gTLD “.fail” is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. The use made by the Respondent of the Domain Name is commercial and so cannot be legitimate noncommercial fair use.
The web site attached to the Domain Name offers web services allowing users to download and mirror material from the Complainant’s web site in breach of the Complainant’s terms of service and using the Complainant’s logo. The Respondent does not make it clear that there is no commercial connection with the Complainant. Use of a domain name containing a third party mark for competing services is not a bona fide offering of goods or services. Nor is allowing use of content from the Complainant’s web site in breach of the Complainant’s terms and conditions.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s trade mark and logo for identical services and allows users to download and mirror content from the Complainant’s site.
This use shows that the Respondent had actual knowledge of the Complainant, its business, rights and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iv) and 4(b)(iii).
7. Decision
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 <tiktok.fail> be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: October 26, 2020
