WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bytedance Ltd. v. Registration Private, Domains by Proxy, LLC / Adrian Karim Berger
Case No. D2021-1798
1. The Parties
The Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains by Proxy, LLC, United States of America (“United States”) / Adrian Karim Berger, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <tiktokshop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed 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 11, 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 June 15, 2021. On the same day, the Respondent sent an informal communication to the Center.
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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. On July 23, 2021, the Center informed the Parties that would proceed with Panel appointment.
The Center appointed Luca Barbero as the sole panelist in this matter on July 28, 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 enables offering creative content platforms powered by leading technology. It owns a series of content platforms that enable people to connect with consuming and creating content through machine learning technology, including Toutiao, Douyin, and TikTok.
While Toutiao is the Complainant’s core product and is one of the most popular content discovery platforms in China, TikTok and Douyin are the Complainant’s platforms or applications for its video-sharing social networking services.
In September 2016, Douyin was launched in China and quickly became a popular short-video sharing platform in China. TikTok was launched outside China in May 2017 and became the most downloaded application in the United States in October 2018.
TikTok enables users to create and upload short videos. It offers features such as background music and augmented reality effects, but users control which features to pair with the content of their self-directed videos, and TikTok serves as a host for the content created by its users. TikTok is available in more than 150 different markets, in 75 languages, and has become the leading destination for short-form mobile video. TikTok has global offices, amongst others, in Los Angeles, New York, London, Paris, Berlin, Dubai, Mumbai, Singapore, Jakarta, Seoul, and Tokyo.
In Google Play, more than 500 million users have downloaded the TikTok app, which is also ranked as the first app in the entertainment category in the Apple Store and the third app in the Social Networks category on the Amazon website.
According to SimilarWeb.com, the website at the domain name <tiktok.com> had a total of 831.39 million visitors, ranking 26th globally and 30th in the United States in the 6-month period between September 2020 and February 2021. Alexa.com ranks the website at the domain name <tiktok.com> as 98th most popular site in the world, 63rd in the United States and 32nd in Mexico, in global Internet traffic and engagement over the 90-day period from December 17, 2020 to March 16, 2021.
The Complainant is the owner of several trademark registrations for TIK TOK, including the following, as per trademark certificates submitted as annexes to the Complaint:
- International trademark registration No. 1485318 for TIK TOK (word mark), registered on March 19, 2019, in international classes 9, 25, 35, 38, 41, 42 and 45;
- European Union trademark registration No. 017913208 for TIK TOK (word mark), filed on June 6, 2018 and registered on October 20, 2018, in international classes 9, 25, 35, 42 and 45;
- United States trademark registration No. 5653614 for TIK TOK (word mark), filed on April 23, 2018, claiming as priority date October 23, 2017, and registered on January 15, 2019, in international classes 9, 38, 41 and 42.
The Complainant is also the owner of the domain name <tiktok.com>, which was originally registered, on July 21, 1996, by a third party and was acquired in May 2018 by the Complainant, who has been using it to promote its video-sharing social networking services under the trademark TIK TOK.
The disputed domain name <tiktokshop.com> was created on August 30, 2016, and is not pointed to an active website.
5. Parties’ Contentions
The Complainant contends that disputed domain name <tiktokshop.com> is confusingly similar to the trademark TIK TOK in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “shop” and the generic Top-Level Domain (“gTLD”) “.com”.
Moreover, considering the Complainant has recently added a “Tik Tok Shop” feature to its app, which enables users to include e-commerce links to their bios, as well as buttons for brands’ video ads and a “Hashtag challenge plus” feature which allows users to shop for products associated with a sponsored hashtag, the Complainant highlights that the inclusion of the word “shop” in the disputed domain name, only serves to further associate the disputed domain name with the Complainant’s trademark, increasing the confusing similarity.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way sponsored by or affiliated with its company, is not commonly known by the disputed domain name, nor has he ever been licensed, authorized or permitted to register any domain names using the Complainant’s trademark.
Moreover, the Complainant contends that, at the time of filing the complaint, the Respondent was using a WhoIs privacy service, which past panels have found amounts to a lack of legitimate interest.
The Complainant also underlines that the Respondent is using the disputed domain name to redirect Internet users to a website that lacks content, thus proving that the Respondent has failed to make use of the disputed domain name and has thus not demonstrated any attempt to make a legitimate use of the disputed domain name and website.
Lastly, the Complainant points out that the disputed domain name was initially registered on August 20, 2016, but only transitioned to the Respondent between December 2, 2020 and March 5, 2021, which falls significantly after the date of the filing of the Complainant’s trademark and significantly after the Complainant’s first use in commerce of its trademark in 2017, as well as after the Complainant obtained its <tiktok.com> domain name in May 2018.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, at the time of registration of the disputed domain name, the Respondent knew, or should have known, of the existence of the Complainant’s trademarks, considering the Complainant’s TikTok app has been downloaded by over 500 million users, it is ranked first in the Entertainment category of the Apple Store and the third app amongst Social Networks on Amazon, having surpassed Facebook, Instagram, Snapchat and YouTube downloads.
The Complainant also emphasizes that, considering the disputed domain name resolves to an inactive page, the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source or affiliation of the same with the Complainant.
Lastly, the Complainant submits that the Respondent’s initial use of a privacy service to hide his identity is additional evidence of his bad faith registration and use.
In his informal email communication of June 15, 2021, the Respondent only states that he has no intention of using the disputed domain name for any kind of business or private use but would be willing to sell it if the offering price meets his expectations.
The same communication was sent to the Complainant on June 24, 2021.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark TIK TOK based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 1 to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The disputed domain name incorporates the trademark TIK TOK in its entirety with the addition of the term “shop”, and the gTLD suffix “.com”, which does not prevent a finding of confusing similarity.
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, might be commonly known by the disputed domain name.
The Panel also notes that the disputed domain name is passively held. In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the panel found that “Absent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute ‘legitimate non-commercial or fair use’”. Furthermore, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name carries a risk of implied affiliation.
Furthermore, in his informal email communication of June 15, 2021, the Respondent explicitly stated that he had no intention of using the disputed domain name but would have been willing to sell it if the offering price had met his expectations. The Panel finds that the Respondent’s statements corroborate his lack of rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name 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 holder’s website or location or of a product or service on the holder’s website or location.
As highlighted above, the disputed domain name was created on August 30, 2016 but the Complainant submitted plausible evidence permitting a reasonable inference – not rebutted – that the Respondent acquired it only between December 2, 2020 and March 5, 2021, significantly after the date of the filing of the Complainant’s trademarks and the Complainant’s first use in commerce of its trademark in 2017, as well as after the Complainant obtained its <tiktok.com> domain name in May 2018.
According to the historical Whois records of the disputed domain name submitted as annex 2 to the Complaint, the disputed domain name was registered, on December 2, 2020, via a registrar and in the name of a registrant and privacy service which differed from the one in use at the time of the filing of the Complaint, whilst on March 10, 2021, it was registered via the current Registrar and in the name of its related privacy service, showing as last update date March 5, 2021.
In view of the above and considering that the Respondent has not submitted any comment on the Complainant’s allegations, the Panel concludes that the disputed domain name was transferred or reassigned from a prior owner to the Respondent either at the end of December 2020 or March 2021, after the Complainant had acquired trademark rights on TIK TOK.
Indeed, as held in section 3.9 of the WIPO Overview 3.0, “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith (…) In cases where the domain name registration is masked by a privacy or proxy service and the complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the respondent to provide satisfactory evidence of an unbroken chain of registration; respondent failure to do so has led panels to infer an attempt to conceal the true underlying registrant following a change in the relevant registration”.
In view of the fact that i) the Complainant’s trademark had already become well-known in Europe and worldwide when the Respondent likely acquired the disputed domain name; ii) the disputed domain name entirely reproduces the Complainant’s prior registered and well-known trademark with the addition of the term “shop”, which is descriptive of a recent service offered by the Complainant under the trademark TIK TOK, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
The disputed domain name has not been pointed by the Respondent to an active website, i.e. has been passively held. As stated in section 3.3 of the WIPO Overview 3.0, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name, his failure to respond to the Complaint and his use of a privacy service to conceal his identity, the Panel finds that the Respondent’s lack of use of the disputed domain name also amounts to bad faith.
As an additional circumstance evidencing bad faith, in light of the content of the correspondence sent by the Respondent to the Center and to the Complaint after the filing of the Complaint, it appears that the Respondent’s sole purpose in registering the disputed domain name was deriving profits from the sale of it to an interested party (likely the Complainant).
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
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 <tiktokshop.com> be transferred to the Complainant.
Date: August 11, 2021