WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bytedance Ltd. v. 王小芹 (Wangxiaoqin)
Case No. D2021-1796
1. The Parties
The Complainant is Bytedance Ltd., Cayman Islands, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is 王小芹 (Wangxiaoqin), China.
2. The Domain Name and Registrar
The disputed domain name <tiktok.shop> is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 10, 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 in English on June 10, 2021.
On June 10, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 10, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2021.
The Center appointed Francine Tan as the sole panelist in this matter on July 16, 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, Bytedance Ltd., is an Internet technology company which developed a series of content-sharing platforms that enable people to connect by consuming and creating content through machine-learning technology. The platforms are known by various names, including Douyin and TikTok. Douyin was launched in China in September 2016, which, according to the Complainant, quickly became a popular short-video sharing platform in China; and TikTok was launched outside China in May 2017 and allegedly became the most downloaded application in the United States of America (“U.S.”) as at October 2018.
The TikTok application is available in more than 150 different markets, in 75 languages, and has become the leading application for short-form mobile videos. The Complainant’s TikTok offices are located in various countries and cities across the world, including in Los Angeles, New York, London, Paris, Berlin, Dubai, Mumbai, Singapore, Jakarta, Seoul, and Tokyo. The Complainant’s TikTok application has been downloaded by more than 500 million users on Google Play and is ranked “No. 1 in Entertainment” in the Apple Store and “No. 3 in Social” on Amazon.
The Complainant owns the domain name <tiktok.com> which, it states, had a total of 831.39 million visitors, ranking 26th globally and 30th in the U.S. in the 6-month period between September 2020 and February 2021. The Complainant obtained the domain name <tiktok.com> in May 2018.
The Complainant has made significant investments to advertise and promote the Complainant’s TIKTOK trade mark worldwide in the media and Internet over the years.
The Complainant states that as a consequence of the aforementioned, its TIKTOK trade mark is well recognised in the industry.
The Complainant owns registrations for the TIKTOK and TIK TOK trade marks (collectively hereinafter referred to as the “TIKTOK trade mark”) in many countries around the world, including the following:
(i) Hong Kong Trade Mark Registration No. 304569373, TIK TOK, registered on June 20, 2018;
(ii) Japan Trade Mark Registration No. 6064328, TIK TOK, registered on July 20, 2018;
(iii) Australia Trade Mark Registration No. 1949117, TIKTOK, registered on August 17, 2018;
(iv) European Union Trade Mark Registration No. 017913208, TIK TOK, registered on October 20, 2018; and
(v) U.S. Trade Mark Registration No. 5653614, TIK TOK, registered on January 15, 2019.
The disputed domain name was registered on November 28, 2020. At the time of the filing of the Complaint and amended Complaint, it resolved to a website providing pay-per-click links to third-party websites offering services, some of which, the Complainant states, compete with the Complainant’s business.
5. Parties’ Contentions
1. The disputed domain name which consists solely of the Complainant’s TIKTOK trade mark is identical to the Complainant’s TIKTOK trade mark. The generic Top-Level Domain (“gTLD”) “.shop” is a standard registration requirement and is not relevant when considering whether the disputed domain name is identical or similar to the Complainant’s trade mark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant. The Respondent has not been authorized by the Complainant to use the TIK TOK trade mark or to apply for any domain name incorporating such trade mark. There is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent’s use of the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which compete with the Complainant’s business, undermines any claim of rights or legitimate interests in the disputed domain name. The links include the use of these phrases: “Tik Tok Fans and Likes”, “Get Fans on Tiktok”, and “Tiktok Camera”. The Respondent presumably derives pay-per-click fees from the linked websites. Such use of the disputed domain name does not constitute a bona fide offering of goods or services that gives rise to rights or legitimate interests in the disputed domain name.
The disputed domain name is being offered for sale for an amount (USD 15,000) which far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name. Furthermore, the disputed domain name was registered on November 28, 2020, which is a significant length of time after the Complainant obtained its <tiktok.com> domain name, and after the Complainant registered its TIK TOK trade mark.
There is no evidence that the Respondent has ever used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
3. The disputed domain name was registered and is being used in bad faith. The Complainant started using its TIKTOK trade mark in respect of goods and services in 2017. The TIKTOK mark is known internationally. The Respondent therefore had actual knowledge of and familiarity with the Complainant’s TIKTOK trade mark and the related business at the time of registration of the disputed domain name. Further, the timing of the Respondent’s domain name registration coincided with the time when there were rumours and articles in circulation about the potential launch of the Complainant’s “TikTok Shop”. The Respondent must have been aware of the Complainant’s TIKTOK trade mark at the time the disputed domain name was registered. Searches across various Internet search engines for “tiktok” would have returned multiple links referencing the Complainant and its business. The Respondent must have registered disputed domain name in response to the said industry rumours which were circulating. Moreover, the Complainant has used the term “TikTok Shop” on its websites for sellers and on its Shopify site. Shopping services are also provided by the Complainant on its Douyin website. Since the Respondent resides in China, she must have been aware of the Complainant’s Douyin shop.
The disputed domain name was registered in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s TIKTOK mark as to the source, sponsorship, affiliation or endorsement of the website.
The Respondent has been a named respondent in two other UDRP cases and holds registrations for several other domain names that misappropriate well-known trade marks (e.g., “ACER”, “NISSAN”). This shows a pattern of cybersquatting, which is further evidence of bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English, the reasons being that:
(i) requiring a translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceeding and adjudication thereof;
(ii) such delay poses continuing risks to the Complainant and unsuspecting consumers seeking the Complainant or its products;
(iii) the disputed domain name consists of Latin characters;
(iv) the website to which the disputed domain name resolves features various phrases in English;
(v) the term “tiktok”, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Chinese language; and
(vi) the disputed domain name is offered for sale on a website which has text in the English language.
The Respondent did not respond on issue of the language of the proceeding.
The Panel determines that English will apply as the language of the proceeding. In the exercise of its discretion, the Panel has to make its determination in the spirit of fairness and justice to the Parties, and to ensure that the proceeding takes place expeditiously and in a cost-effective manner. In this case, the Panel does not find anything to contradict what appears to be the case, that the Respondent is comfortable with and understands the English language. Moreover, the Panel notes that the Respondent has chosen not to participate in this proceeding and that all of the Center’s communications with the Parties have been sent in both English and Chinese. In the absence of any objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. There is no evidence that the Respondent would be prejudiced by a determination that English would be adopted as the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the TIKTOK trade mark. The trade mark is reproduced in its entirety in the disputed domain name with no other distinguishing elements. The Panel agrees that the disputed domain name is identical to the Complainant’s trade mark.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
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 name. The Complainant’s registrations of the TIKTOK trade mark predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use the TIKTOK sign as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “Tik Tok” or “Tiktok”. The use of the disputed domain name which fully incorporates the Complainant’s famous TIKTOK trade mark for a website providing pay-per-click links to competing or potentially competing websites does not constitute a legitimate noncommercial offering of goods and services.
The burden of production accordingly shifts to the Respondent to show that she has rights or legitimate interests in the disputed domain name. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. Taking into account the global fame of the Complainant and its TIKTOK application, the Panel cannot anticipate how the Respondent could possibly demonstrate that she has rights or legitimate interests in the disputed domain name. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant’s TIKTOK trade mark is well established, the TikTok application having become extremely popular and widely used across the world. Subject to evidence to the contrary, the Panel is persuaded that the Respondent could not by pure coincidence and without prior knowledge of the Complainant and its mark have selected the disputed domain name without the Complainant and/or its TIKTOK trade mark in mind. The “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. Further, the prima facie evidence produced by the Complainant shows that the Respondent’s registration of the disputed domain name coincided with the period when rumours were rife in the industry regarding the Complainant’s potential launch of a “TikTok Shop”. One can draw an inference that the Respondent targeted the Complainant and its mark and sought to ride off the reputation of the Complainant’s TIKTOK trade mark, at an opportune time. The Complainant also provided evidence that the Respondent was attempting to sell the disputed domain name in the amount of USD 15,000. This amount is in excess of out-of-pocket expenses incurred for the domain name registration.
The Panel finds that the Respondent’s absence of rights or legitimate interests in the disputed domain name, the well-known nature of the Complainant’s trade mark, the Respondent’s failure to respond in this proceeding, the nature of the website to which the disputed domain name resolves, the circumstances surrounding the timing of the registration of the disputed domain name, as well as the offer to sell the disputed domain name for valuable consideration in excess of out-of-pocket-expenses, can only lead to a conclusion that the disputed domain name was registered and is being used in bad faith.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <tiktok.shop> be transferred to the Complainant.
Date: July 27, 2021