WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bytedance Ltd. v. Domain Administrator, See PrivacyGuardian.org / Nguyen Daong
Case No. D2020-2843
1. The Parties
The Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (the “United States”) / Nguyen Daong, Viet Nam.
2. The Domain Name and Registrar
The disputed domain names <businesstiktok.org>, <businesstiktoks.com>, <businesstiktoks.net>, and <businesstiktoks.org> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 2020 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 October 30, 2020.
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 November 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. The Respondent sent email communications on October 29, 2020 and November 6, 2020. A communication regarding possible settlement was sent on November 6, 2020 by the Center. On November 9, 2020, the Complainant requested the proceedings to continue. Accordingly, the Center notified the commencement of panel appointment process on November 24, 2020.
The Center appointed Cherise Valles as the sole panelist in this matter on December 3, 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 (and its subsidiary, TikTok Information Technologies UK Limited), is the owner of trademark registrations for TIK TOK in various jurisdictions. The Complainant has trademark registrations from the United States Patent and Trademark Office (USPTO), the European Union’s Intellectual Property Office (EUIPO), and the World Intellectual Property Organization (WIPO) for these registrations (“Complainant’s trademark.” The relevant trademark registrations are:
Bytedance is an Internet technology company that enables users to discover creative content platforms or applications (“apps”) powered by technology. It owns a series of content platforms that enable people to create and consume content through machine learning technology, including Toutiao, Douyin, and TikTok.
Toutiao is the Complainant’s core product, which is a popular content discovery platform in China. TikTok and Douyin are the Complainant’s platforms for its video-sharing social networking services. In September 2016, Douyin was launched in China and became a popular short-video sharing platform in China. In May 2017, TikTok was launched outside China and became the most downloaded application in the United States in October 2018.
TikTok allows users to create vertical videos that typically runs for 15 seconds before looping to restart and connect clips to create videos up to 60 seconds long. The videos incorporate music samples, filters, quick cuts, stickers and other creative add-ons. TikTok is available in more than 150 different markets, in 75 languages, and has become a popular destination for short-form mobile videos. TikTok has offices around the world, including in Los Angeles, New York, London, Paris, Berlin, Dubai, Mumbai, Singapore, Jakarta, Seoul, and Tokyo.
More than 500 million users have downloaded the TikTok app in Google Play. The app is ranked as “#1 in Entertainment” in the Apple Store and “#3 in Social” in Amazon. The Complainant also has a large Internet presence through its primary website <tiktok.com>. According to SimilarWeb.com, <tiktok.com> had a monthly average of 157.08 million visitors between September 2019 and February 2020. Alexa.com ranks <tiktok.com> as the 409th most popular site in the world, and 140th in India and 299th in the Russian Federation.
In summary, the Complainant’s TIK TOK trademark is well recognized and worldwide in the industry and among consumers.
The disputed domain names were registered on September 11 and 15, 2020. The disputed domain names <businesstiktok.org> and <businesstiktoks.org> redirect users to unrelated websites <theshivanna.com> and <23aq.com/index.php?r=l&cid=3&s=t> and, the disputed domain names <businesstiktoks.com> and <businesstiktoks.net>, resolve to inactive pages.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain names are confusingly similar to the Complainant’s registered TIK TOK trademarks, in light of the fact that they wholly incorporate the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain names.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain names have been registered and are being used in bad faith.
- The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent sent email communications on October 29, 2020 and November 6, 2020, in which he posed certain questions about the process and indicated a desire to arrive at an agreement with the Complainant. However, the Complainant decided to pursue these proceedings instead.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant’s trademark.
By virtue of its trademark registrations, the Complainant is the owner of the TIK TOK trademark. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”).
It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the extension into account. See WIPO Overview 3.0 at section 1.11.1(“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test.”).
The Respondent has added the generic, descriptive term “business” before the Complainant’s TIK TOK trademark in all the disputed domain names, and the letter “s” after the TIK TOK trademark in three of the four disputed domain names, thereby making the disputed domain names confusingly similar to the Complainant’s trademark. As stated in section 1.8 of the WIPO Overview 3.0 “[w]here 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”.
The Complainant also owns the site “TikTok for Business”, which provides information and supports business owners in growing their businesses. The fact that the term “business” is associated with the Complainant’s brand only serves to confirm the confusing similarity between the disputed domain names and the Complainant’s trademark.
Previous UDRP panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to that complainant’s business is confusingly similar to that complainant’s trademarks. See Inter IKEA Systems B.V. v. Franklin Lavall?e/ IkeaCuisine.net, WIPO Case No.D2015-2042 (“The confusing similarity between the disputed domain name and the Complainant’s IKEA trade mark is in fact further enhanced by the inclusion of a term that relates to the furniture business of the Complainant”).
In addition, the Respondent’s use of the disputed domain names <businesstiktok.org> and <businesstiktoks.org> contribute to the confusing similarity. The Respondent is using the disputed domain names <businesstiktok.org> and <businesstiktoks.org> to redirect users to unrelated websites <theshivanna.com> and <23aq.com/index.php?r=l&cid=3&s=t>, respectively, for commercial gain, which suggests that the Respondent intended the disputed domain names <businesstiktok.org> and <businesstiktoks.org> to be confusingly similar to Complainant’s trademark in order to increase consumer confusion. Although the content is not usually taken into consideration under the first element of the Policy, the WIPO Overview 3.0 notes that there are cases in which “panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name” (section 1.15). Thus, the Respondent’s use of the disputed domain names <businesstiktok.org> and <businesstiktoks.org> for commercial gain is further evidence that these disputed domain names are confusingly similar to the Complainant’s TIK TOK trademark.
Based on the foregoing, the Panel finds that the disputed domain names are confusingly similar to Complainant’s TIK TOK trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. Noting the facts and allegations mentioned above, the Panel finds that the Complainant has satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this leads to a presumption that the Respondent is unable to show that such a right or legitimate interest exists.
The granting of the registrations for the TIK TOK trademark by USPTO, EUIPO, and WIPO to the Complainant is prima facie evidence of the following: the validity of the term “tik tok” as a trademark, the Complainant’s ownership of this trademark, and the Complainant’s exclusive right to prevent others from using the TIK TOK trademark in commerce or in connection with related goods and/or services.
The Respondent is not sponsored by, or affiliated with, the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names. “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.
The Respondent is not commonly known by the disputed domain names, which evinces a lack of rights or legitimate interests. Paragraph 4(c)(ii) of the Policy and WhoIs data for the disputed domain names in Annex 2 to the Complaint. See also World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642, where the panel found that a respondent, or his/her organization or business, must have been commonly known by the domain name at issue at the time of registration in order to have a legitimate interest in the domain name.
In this case, the pertinent information in WhoIs record identifies the Registrant as “Domain Administrator / See PrivacyGuardian.org”, which is not similar to the disputed domain names. Thus, there is no evidence, including in the WhoIs record, which shows that the Respondent is commonly known by the disputed domain names. The Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049, in which the panel noted that “the Respondent’s name is “Bestinfo” and … it can therefore not be ‘commonly known by the Domain Name’ [moncler.com])”.
Furthermore, at the time of the filing of the Complaint, the Respondent was using a privacy service, which previous UDRP panels have found to equate to a lack of legitimate interest. See Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855, in which the panel concluded that “the Respondent possesses no entitlement to use the name or the words in the Complainant’s marks and infers […] from the “Private Whois” registration that it is not known by such name. There is no evidence of the Respondent ever being commonly known by the name or words now included in the disputed domain name”.
The Respondent is using the disputed domain names <businesstiktok.org> and <businesstiktoks.org> to redirect users to unrelated websites <theshivanna.com> and <23aq.com/index.php?r=l&cid=3&s=t>. The disputed domain names <businesstiktoks.com> and <businesstiktoks.net> resolve to inactive pages.
The Respondent appears to have attempted to divert consumers to its websites for commercial gain. It used the website <businesstiktok.org> to create the impression that it is a website that is authorized and administered by the Complainant.
When Internet users accessed <businesstiktok.org>, they were asked for personal information and promised a USD 5,000 credit for signing up for a business account at the Complainant’s supposed TikTok for Business website. Furthermore, the metadata associated with the disputed domain name <businesstiktok.org> specifically refers to Complainant and its trademark. Website metadata is used by search engines to link the relevancy of a user’s search term with online content (Annex 9 to the Complaint). As such, Respondent is using this metadata to increase the likelihood that an Internet user searching for the Complainant through a search engine would see the disputed domain name and subsequently become confused as to its ownership. Thus, the Respondent’s attempted association with the Complainant’s business diverted traffic to the Respondent’s website for commercial gain at a minimum, and, at worst, in order to ‘phish’ personal information for nefarious purposes.
Such actions fail to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(i) and (iii) of the Policy. SeeWIPO Overview 3.0 at section 2.13.1: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” See also Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510, in which the panel found that the use of the domain name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services.
For the reasons set out above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Complainant and its TIK TOK trademark are known internationally. The Complainant has trademark registrations in many jurisdictions and has marketed and sold its goods and services using this trademark since 2017, which is well before the Respondent’s registration of the disputed domain names on September 11 and 15, 2020.
Given the popularity of Tik Tok among consumers, it is to be expected that the Respondent was aware of Tik Tok. As noted by a previous UDRP panel, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain names were registered”. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In other words, TIK TOK is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226.
As noted above, the Respondent has registered and previously used the disputed domain name <businesstiktok.org> for the ostensible purposes of launching a phishing attack, which is clear evidence of bad faith registration and use.
The disputed domain names <businesstiktoks.com> and <businesstiktoks.net> currently resolve to inactive sites and are not being used. Previous UDRP panels have noted that the term bad faith “use” in the context of paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. See DCI S.A. v. Link Commercial Corp, WIPO Case No. D2000-1232, in which the panel concluded that the respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy.
Moreover, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which previous panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230. See also WIPO Overview 3.0 at section 3.6(“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).
In the light of the foregoing, it is more likely than not that the Respondent knew of, and specifically used, the Complainant’s trademark, in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer IDNo. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754, in which the panel made its finding regarding bad faith registration by asking “whether it is more likely than not from the record of the evidence in the proceeding that the Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”
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 names <businesstiktok.org>, <businesstiktoks.com>, <businesstiktoks.net>, and <businesstiktoks.org> be transferred to the Complainant.
Date: December 22, 2020