WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bytedance Ltd. v. Yu Li
Case No. D2021-1887
1. The Parties
Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Yu Li, China.
2. The Domain Name and Registrar
The disputed domain name <babevideo.vip> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also, on June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 21, 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2021.
The Center appointed Harrie R. Samaras 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
Complainant Bytedance Ltd. is an Internet technology company owning various content platforms. Complainant, through its subsidiary PT MP Games, owns trademark registrations for the word mark BABE (“BABE Mark” or the “Mark) in Indonesia (e.g., Registration No. IDM000699832, registered May 12, 2020) and in Singapore (e.g., Registration No. 40201602801W, registered February 16, 2016). Also, Complainant has registrations in Indonesia (e.g., IDM000699827 (registered May 12, 2020), IDM000829350 (registered February 18, 2021), IDM000829353 (registered February 18, 2021) for a “logo” mark featuring the face of a man with one ear showing that is outlined in black and having a black moustache, dark sunglasses and a black hat in front of an orange background (the “Logo”). Complainant also has a Chinese copyright registration for a similar looking logo that was registered May 14, 2019.
The BABE Mark has an Internet presence through the website “www.babe.co.id” and social media accounts.
In December 2016, Bytedance became the controlling stakeholder of a new trademark application in Indonesia for the mark BaBe (Baca Berita). Baca Berita was launched in 2013 and was developed by PT MP Games (a subsidiary of Bytedance). It is Indonesia’s leading news and content app with more than 30 million users, offering personalized news and entertainment content from more than 1,000 local and international publisher partners, across 20 categories. In Google Play, more than 10 million users have downloaded the Helo BaBe - Baca Berita app, while more than 5 million users have downloaded the BaBe+ - Berita Indonesia app. The BaBe app has been given a 4.7 rating at the Apple Store. On Instagram, the account “BaBe - Baca Berita Indonesia” has over 189,000 followers, and the “BeritaBaBe” Facebook account has 746,999 likes and 755,702 followers.
The Domain Name was registered on April, 24, 2021. It resolved to a website (“Respondent’s website”) having the following characteristics: (1) a favicon of the Logo that is evident no matter which page of Respondent’s website an Internet user is on; (2) a Login page requesting a username and password; (3) a Registration page requesting a user name, password, phone number, invitation code; (4) a chat room page prominently featuring the Logo at the top next to the words “BABE video”. In the center of the page the Logo is featured again adjacent the chat area; (5) a Telegram page featuring the Logo and the words “BABE Video” followed by “VIEW IN TELEGRAM”; and (6) another Login page requesting name and password and there was a link to “Download Android Apps” and reference to babevideo.apk.
5. Parties’ Contentions
Complainant has trademark registrations for the BABE Mark. The Top-Level Domain (“TLD”) in a domain name should not be taken into account in determining confusing similarity. The addition of the term “video” to the BABE Mark only serves to increase the confusing similarity between the Domain Name and the Mark because the term video is reflective of Complainant’s BaBe app that brings together all trending news and videos in Indonesia and throughout the world. Additionally, Respondent’s use of the Domain Name contributes to the confusion because Respondent is using it to resolve to a login page, which features Complainant’s BABE Logo trademark and copyright as a website favicon. This logo is further displayed in the website’s live chat room, Telegram channel and downloadable mobile application (app). Such use of the Domain Name suggests that Respondent intended the Domain Name to be confusingly similar to the Mark as a means of furthering consumer confusion. Although the content is usually disregarded under the first element of the UDRP, UDRP panels have taken note of the content of the website associated with a domain name to confirm confusing similarity where it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, Complainant has not given Respondent a license, authorization or permission to use the Mark in any manner, including in domain names. Also, the pertinent WhoIs information identifies the Registrant as “Yu Li”, which does not resemble the Domain Name. Where no evidence, including the WhoIs record for the Domain Name, suggests that Respondent is commonly known by the Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Domain Name within the meaning of the Policy. In creating the impression that Respondent’s website is one that is authorized and administered by Complainant. Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by requesting their login usernames and passwords. Respondent’s website also includes a registration page for non-registered users, where they are required to key in usernames, passwords and phone numbers. Thus, Respondent’s website seeks to take advantage of the fame of Complainant’s trademark and the trust and goodwill that Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to the website for personal gain, and at worst, “phish” personal information from Complainant’s customers.
Respondent’s website also has a download link for “babevideo” which, if you click on the link, downloads an Android Package Kit (“APK”) file titled “babevideo.apk”. However, no mobile version of “babevideo” that is associated to or authorized by Complainant exists. Thus, “babevideo.apk” is potentially a representative of a fraudulent and deceptive attempt to distribute malware. As such, Respondent’s use of the Domain Name to attempt to spread malware or viruses to Internet users visiting the website evinces Respondent’s lack of rights or legitimate interests in the Domain Name.
Complainant and its BABE Mark are well-known. It has been marketed and used in commerce since 2013, which is well before Respondent’s registration of the Domain Name. By registering a domain name that incorporates Complainant’s BABE trademark and the related term “video”, Respondent has demonstrated a knowledge of and familiarity with Complainant’s Mark and business. Further, by copying Complainant’s BABE Logo trademark and copyright on its website, there is no denying that Respondent registered the Domain Name to specifically target Complainant.
Respondent is using its website to fraudulently pose as Complainant for purposes of launching a phishing attack, which is evidence of bad faith use. Respondent has reproduced Complainant’s BABE Logo trademark and copyright as a website favicon. This logo is also used in the website’s live chat room, Telegram channel and downloadable mobile app. Thus, any Internet user with the misfortune of mistakenly landing at Respondent’s website could easily be deceived and misled into believing that the Domain Name is officially associated with Complainant and supply Respondent with personal information as part its phishing scheme.
Such actions indicate that Respondent has been intentionally attempting to pass off the website as belonging to Complainant thus demonstrating bad faith registration and use under Policy.
Further evidence of Respondent’s bad faith use is that Respondent’s website allows the download of an unauthorized APK file called “babevideo.apk”, which [potentially] transmits malware and/or viruses to Internet users.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By virtue of the trademark registrations set forth above for the BABE Mark, Complainant has established its rights in the Mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at 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.”.
The Panel further finds that the Domain Name <babevideo.vip> is confusingly similar to Complainant’s BABE Mark. The relevant comparison to be made is with the second-level portion of the Domain Name (i.e., “babevideo”). The Domain Name wholly incorporates the BABE Mark, adding the word “video”. Including the BABE Mark in the Domain Name in its entirety is enough to render the Domain Name confusingly similar to that Mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. Combining the BABE Mark with an additional descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0”.
Furthermore, the gTLD such as “.vip” is disregarded under the first element confusing similarity test because the use of a TLD is required of domain name registrations. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant maintains that it has neither sponsored Respondent nor is Respondent affiliated with Complainant. Furthermore, Complainant represents that it has not given Respondent a license, authorization or permission to use the Mark in any manner, including in domain names.
In considering the pertinent WhoIs information, Complainant notes that the Registrant is identified as “Yu Li”, which does not resemble the Domain Name. It further argues that where there is no evidence, including the WhoIs record for the Domain Name, suggesting that Respondent is commonly known by the Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Domain Name.
Complainant also maintains that Respondent is using the Domain Name for personal gain and not for a bona fide use. In this regard it argues that in creating the impression that Respondent’s website is one that is authorized and administered by Complainant (using the Domain Name, favicon, Complainant’s Mark and Logo), Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by requesting their login usernames and passwords. And, Complainant points out that Respondent’s website includes a registration page for non-registered users, where they are required to key in usernames, passwords and phone numbers. According to Complainant all of this is to illegitimately increase traffic to Respondent’s website for personal gain, and at worst, to phish personal information from Complainant’s customers.
Furthermore, Respondent’s website also has a download link for “babevideo” which, if you click on the link, downloads an Android Package Kit (“APK”) file titled “babevideo.apk”. However, no mobile version of “babevideo” that is associated with or authorized by Complainant exists. Thus, “babevideo.apk” is potentially a representative of a fraudulent and deceptive attempt to distribute malware. As such, Respondent’s use of the Domain Name to attempt to spread malware or viruses to Internet users visiting the website evinces Respondent’s lack of rights or legitimate interests in the Domain Name.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden of production to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that it is more likely than not that Respondent registered the Domain Name with full knowledge of Complainant’s rights in the BABE Mark. Complainant obtained trademark registrations and were using the Mark before Respondent registered the Domain Name. Adding the term “video” to the BABE Mark was not happenstance under the facts and circumstances here because that term reflects Complainant’s BaBe application, which assembles trending news and videos in Indonesia and throughout the world. Thus, purposefully combining Complainant’s BABE Mark with a word that describes an aspect of Complainant’s business indicates that Respondent was aware of Complainant, its BABE Mark and its business. Moreover, Respondent did not only misappropriate Complainant’s BABE Mark for the Domain Name and its website, but it also misused Complainant’s registered Logo and copyrighted image on its website further indicating Respondent’s targeting of Complainant.
In addition to using a confusingly similar Domain Name in conjunction with its website, Respondent has gone to some lengths on the website to suggest an association with Complainant. This includes using Complainant’s registered Logo and copyright on the website and as a website favicon. The Logo is also used in the website’s live chat room and Telegram channel. Thus, someone searching on the Internet and landing at Respondent’s website while looking for Complainant could easily be misled into believing that Respondent’s website is associated with Complainant. Furthermore, they could unsuspectingly supply personal information as part of what appears to be a phishing scheme (e.g., login username and password or register an account by providing a username, password and phone number). Use of the Domain Name for such activities evinces bad faith use. SeeTwitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488 (“The Panel accepts Complainant’s undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that there is strong suspicion of Respondent using the Domain Name in an elaborate common phishing scam.”).
Further bad faith use is demonstrated by Respondent’s use of a link for the public to download an unauthorized APK file called “babevideo.apk”, which would result in the transmission of malware and/or viruses to Internet users. Such use of the Domain Name is considered bad faith use. See WIPO Overview 3.0 at section 3.4: “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.”.
Accordingly, Complainant has satisfied 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 Domain Name <babevideo.vip> be transferred to Complainant.
Harrie R. Samaras
Date: August 10, 2021