WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bytedance Ltd. v. Whois Privacy, Private by Design, LLC / Hoang Tung
Case No. D2020-3084
1. The Parties
The Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Whois Privacy, Private by Design, LLC, United States of America / Hoang Tung, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <tiktokads.business> and <tiktok-business.net> are registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 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 November 23, 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 November 25, 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 December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2021. The Center received an informal email communication from the Respondent on January 20, 2021.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 21, 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.
4. Factual Background
The Complainant is an Internet technology company that owns and provides content platforms that enable people to connect by creating content through machine learning technology, including TikTok. TikTok is one of the Complainant’s platforms and applications for its video-sharing social networking services and was launched outside China in May 2017. TikTok is available in more than 150 different markets, in 75 languages, and is recognized as the leading destination for short-form mobile video.
The Complainant, together with its subsidiary, TikTok Information Technologies UK Limited, is also the owner of trademark registrations for TIK TOK across various jurisdictions, including:
- United States trademark number 5653614 for TIK TOK, registered on January 15, 2019, for goods and services in international classes 9, 38, 41 and 42;
- European Union trademark number 017913208 for TIK TOK, registered on October 20, 2018 for goods and services in international classes 9, 25, 35, 42 and 45; and,
- Vietnamese trademark number 40344939000 for TIK TOK, registered on February 17, 2020, for goods and services in international classes 9, 38 and 41.
The Complainant also owns and operates its primary website at “www.tiktok.com” and launched TIK TOK for Business service in June 2020.
The disputed domain names were registered on October 19, 2020. The disputed domain names were previously redirecting to “https://play.google.com/store/apps/details?id=tiktok.bsn”, where Internet users were allowed to download an unauthorized TikTok for Business app. As a consequence of the Complainant’s abuse reports to the hosts of the disputed domain names they currently redirect users to Google’s official website “www.google.com”.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to the TIK TOK trademark in which it has rights. Both of the disputed domain names incorporate the trademark in its entirety and differs from the trademark only by the addition of the terms “ads” and “-business” respectively.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names, nor has the Respondent been authorized or allowed by the Complainant to make any use of its TIK TOK trademark. Furthermore, there is nothing that suggests that the Respondent has been commonly known by the disputed domain names, nor does the Respondent’s use of the disputed domain names to redirect to the website “https://play.google.com/store/apps/details?id=tiktok.bsn”, where Internet users were allowed to download an unauthorized TikTok for Business app, constitute bona fide offerings of goods or services, or legitimate noncommercial or fair use of the disputed domain names.
Finally, the Complainant contends that that the disputed domain names were registered and are being used in bad faith. It is thus inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant’s trademark. On the contrary, by registering domain names that incorporate the Complainant’s TIK TOK trademark in its entirety and by adding the terms “ads” and “-business” respectively as suffixes the Respondent has demonstrated a knowledge of and familiarity with Complainant’s trademark and its business. The Respondent initially used the disputed domain names to redirect Internet users to a Google Play page where an unauthorized TikTok for Business app could be downloaded. In addition, these pages displayed a layout that closely resembled the layout of the Complainant’s website. Further, this demonstrates that Respondent used the Disputed Domain Names to confuse unsuspecting Internet users looking for Complainant’s services, and to mislead Internet users as to the source of the domain names and websites, all of which constitutes bad faith use.
The Respondent did not reply to the Complainant’s contentions.
However, as mentioned above the Respondent sent an informal email communication sent to the Center on January 20, 2021, with the following content: “ok”.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark TIK TOK, since the disputed domain names contain this mark in its entirety together with the descriptive term “ads” and “-business” respectively. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The generic Top-Level Domains (“gTLDs”) “.net” and “.business” are standard registration requirements and as such they are generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.
B. Rights or Legitimate Interests
It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark TIK TOK.
Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not rebutted this. Furthermore, the way the Respondent has used the disputed domain names, including redirection to a website closely resembling the layout of the Complainant’s website and offering an unauthorized TikTok for Business app for download, supports a finding that the Respondent lacks of rights or legitimate interests in the disputed domain names. See section 2.13 of the WIPO Overview 3.0.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 the respondent’s 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 the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, including the evidence on record of the use and worldwide reputation of the Complainant’s trademark TIK TOK and the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain names in bad faith.
It is equally obvious to the Panel that the disputed domain names have been used in bad faith. As explained above the Respondent initially used the disputed domain names to redirect Internet users to a Google Play page that displayed a layout that closely resembled the layout of the Complainant’s website and on which an unauthorized app bearing Complainant’s trademark could be downloaded. Under these circumstances and since the Respondent still retains control over the disputed domain names, the fact that the disputed domain names currently redirect internet users to the “www.google.com” website does still constitute bad faith use.
Noting that the disputed domain names incorporate the Complainant’s distinctive and reputed trademark TIK TOK and the gTLDs “.net” and “.business” respectively, that the Respondent has not substantively replied to the Complainant’s contentions, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <tiktokads.business> and <tiktok-business.net>, be transferred to the Complainant.
Date: February 3, 2021