WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bytedance Ltd. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Md Zulfikar, Tisa Digital Print

Case No. D2021-1548

1. The Parties

The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Md Zulfikar, Tisa Digital Print, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <tiktokmusicallydown.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On My 18, 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 May 19, 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 May 20, 2021.

On May 26, 2021 the Complainant sent an email communication to the Center requesting a 30-day suspension of the proceedings to explore settlement options. On May 27, 2021 the Center sent the Notification of Suspension to the Parties. On June 24, 2021 the Complainant requested the reinstitution of the proceedings. The Center reinstituted the proceedings on June 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 June 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2021. The Respondent sent informal communications to the Center on May 19, 2021; June 24, 2021; and July 20, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 30, 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 operates a series of content platforms that enable people to create and view social media and video content, including the platforms Toutiao, Douyin, and TikTok.

The Complainant is the owner of trademark registrations for TIK TOK and MUSICAL.LY across various jurisdictions, among others:

- TIK TOK United States of America Trademark Registration No. 5653614, registered on January 15, 2019;
- TIK TOK European Union Trademark Registration No. 017913208, registered on October 20, 2018;
- MUSICAL.LY United States of America Trademark Registration No.5268717, registered on August 22, 2017; and
- MUSICAL.LY Canadian Trademark Registration No. TMA1053917, registered on September 12, 2019.

The Respondent registered the disputed domain name on July 11, 2020. The disputed domain name resolves to a web hosting “Plesk”. However, the Complainant submitted evidence that the disputed domain name resolved to a third-party website called Save Videos which claims to be a Tik Tok video downloader.

5. Parties’ Contentions

A. Complainant

The Complainant contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the disputed domain name is a combination of the Complainant’s TIK TOK and MUSICAL.LY trademarks, together with a typo of the MUSICAL.LY trademark.

The Complainant further states that the trademark TIK TOK is recognizable within the disputed domain name despite the addition of the misspelled trademark MUSICAL.LY - as such, the resulting disputed domain name must be considered confusingly similar to the Complainant’s trademarks.

Finally, the Complainant alleges that the mere addition of this generic term “down” to the Complainant’s trademarks does not negate the confusing similarity between the disputed domain name and the Complainant’s trademarks.

Rights or legitimate interests

The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way. In addition, the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.

The Complainant further alleges that the Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.

Moreover, the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain name. On the contrary, the Respondent is not only using the confusingly similar disputed domain name but is also confusing users into believing that some sort of affiliation exists between it and the Complainant by adding a title “Tik Tok Video/Music Downloader with musically down No Watermark”, which is contrary to TikTok’s Terms of Service.

Registration and use in bad faith

The Complainant claims that TIK TOK and MUSICAL.LY trademarks are known internationally, with trademark registrations across numerous countries. The Complainant 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 name on July 11, 2020.

The Complainant further contends that the disputed domain name incorporates the TIK TOK and the misspelled version of the MUSICAL.LY trademarks in their entirety while merely adding the generic term “down”. Thus, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademarks.

As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

Furthermore, the Complainant affirms that the disputed domain name resolves to a website that features the Complainant’s TIK TOK and MUSICAL.LY trademarks, along with Tik Tok’s musical note logo, while offering services that relate to or compete with the Complainant’s TikTok app. Thus, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s trademarks at the time the disputed domain name was registered.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, by an informal communication it stated that it did not need the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain name at issue in this case:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the disputed domain name <tiktokmusicallydown.com> is confusingly similar to the Complainant’s trademarks TIK TOK and MUSICAL.LY. The disputed domain name contains the trademark TIK TOK in its entirety and the trademark MUSICAL.LY almost in its entirety.

The disputed domain name only differs from the Complainant’s trademarks with the addition of the term “down” and the omission of the dot in the trademark MUSICAL.LY. The addition of such term and the omission of the dot do not prevent a finding of confusing similarity between the Complainant’s trademarks and the disputed domain name.

Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent ’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is 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 at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trademarks in the disputed domain name. Furthermore, there is no evidence that the Respondent is commonly known by the disputed domain name.

The Respondent has failed to show that it has acquired any rights with respect to the disputed domain name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but instead it replied that it did not need the disputed domain name.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The disputed domain name was registered in 2020, while the Complainant ’s trademarks MUSICAL.LY and TIK TOK were registered in the years 2017 and 2018, respectively.

The fact that the disputed domain name is identical and almost identical to two of the Complainant’s trademarks, establishes that the Respondent was well aware of the Complainant’s trademarks when registering the disputed domain name. In addition, the Panel notes that the website at the disputed domain name purports to provide a TikTok video downloader with no watermark, which implies that the Respondent’s targeted the Complainant.

Thus, the Panel concludes the Respondent registered the disputed domain name in bad faith.

In the case at hand, in view of the Respondent ’s registration of a domain name confusingly similar to the Complainant ’s trademarks, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name, and its failure to formally respond to the Complainant’s contentions, constitutes bad faith. For that reason, the Panel concludes that this conduct qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent ’s use of the disputed domain name attempts to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant ’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent ’s website.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

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 disputed domain name, <tiktokmusicallydown.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: August 13, 2021