TikTok owner wins the dispute over Ukrainian domain name
The World Intellectual Property Organization is one of the specialized agencies of the United Nations that deals with the protection of intellectual property.
On June 4, 2020, the organization received a complaint from ByteDance about the disputed domain name. The domain name <tiktok.com.ua> was (and still is) registered on the individual Alexey Dubinin. In the Ukrainian registers, the company “ЦПК Онлайн” is registered on the entrepreneur with the same name, whose main activity is an organization of conventions and trade shows, including online ones.
According to Whois verification services, the domain was created on May 17, 2019, and registered with a hosting provider Hosting Ukraine. TikTok became available to users outside China also in 2019.
The WIPO noted that the rights to the TikTok trademark belong to the complainant and that the latter has invested a lot of money in the promotion of this trademark, including on the Internet. This trademark is known worldwide and was known before the registration of the domain in Ukraine. The domain name is identical to the trademark name, which belongs to ByteDance. Therefore, the Chinese company stated that Dubinin had no right to register such a domain name. However, the respondent did not respond to the requests of the WIPO.
In the end, the WIPO decided that the rights to the disputed domain should be transferred to the owner of TikTok. There is no claim or decision in the Ukrainian registry of court decisions that would challenge Dubinin’s rights to this domain.
Why was the dispute about the domain name not heard in the Ukrainian court? According to Hostmaster, starting from December 19, 2019, in the Ukrainian public domain <com.ua> there is a procedure of pre-trial settlement of domain disputes according to the UDRP (Uniform Domain Name Dispute Resolution Policy).
Under this procedure, domain disputes are considered by the WIPO arbitrators (including Ukrainian citizens among them) at the WIPO Arbitration and Mediation Center. This process does not affect the transfer of the case to court (in this case, the consideration by the WIPO stops). This procedure is mandatory for many top-level domains (.com, .org, .net).
Let us recall that there was a similar case in Ukrainian jurisprudence. Google challenged the right to own the top-level domain google.ua. The Ukrainian company that registered it was called “ГОУ ОГЛЕ” (GO OGLE LLC), it received the rights to the domain in 2007, and in 2010 the court decided to transfer the domain to Google.