WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bytedance Ltd., Beijing Bytedance Technology Co. Ltd v. PrivacyGuardian.org / Franz Augusto
Case No. D2021-3036
1. The Parties
The Complainants are Bytedance Ltd, United Kingdom, and Beijing Bytedance Technology Co. Ltd, China, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is PrivacyGuardian.org, United States of America (“United States” or “US”) / Franz Augusto, Philippines.
2. The Domain Names and Registrar
The disputed domain names <douyin18.me>, <tiktok18.info>, <tiktok18.top>, and <tiktok18.xyz> are registered with NameSilo, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 2021, 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 Complainants on September 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 23, 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on November 24, 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 Complainants provide under the marks TIK TOK, TIKTOK, and DOUYIN online platforms which enable inter alia their users to create and upload short videos (Annex 5 to the Complaint).
Whereas the Complainants’ platform in China operates under the mark DOUYIN (Annex 8 to the Complaint), the marks TIK TOK and TIKTOK are used by the Complainants in various countries around the world (Annex 7 to the Complaint).
The Complainants have registered inter alia trademarks regarding
- TIK TOK and TIKTOK: US Registration No 5653614, registered January 15, 2019; US Registration No. 5981212, registered on February 11, 2021; European Union Registration No 017913208, registered October 20, 2018; International Registration No 1485318, registered November 21, 2019;
- DOUYIN: China Registration No 28968194, registered December 21, 2018 (Annex 1 to the Complaint).
The Complainants also have a large internet presence through its primary websites for these platforms which are addressed by the domain names <tiktok.com> registered July 21, 1996, and <douyin.com> registered May 2, 2005 (See Annex 4 and 5 to the Complaint)
The disputed domains were registered on June 26, 2019, regarding <douyin18.me> and on June 16, 2020, regarding <tiktok18.info>, <tiktok18.top> and <tiktok18.xyz> (Annex 2 to the Complaint).
The disputed domain names are being used to address websites, which provide services under “Tiktok 18+” featuring “The Adult Videos on Tiktok” together with the Complainants’ brand logo (Annex 3 to the Complaint).
5. Parties’ Contentions
The Complainants are internet technology companies that enables users to discover a world of creative content platforms powered by leading technology. They own a series of content platforms that enable people to connect with consuming and creating content through machine learning technology. The Tiktok and Douyin platforms enable their users to create and upload short videos; both platforms offer features such as background music and augmented reality effects, but users control which features to pair with the content of their self-directed videos. Tiktok and Douyin, respectively, serve as hosts for the content created by their users.
Douyin is China’s leading destination for short-form mobile videos. Powered by easy-to-use video creation tools, it quickly became a highly popular app across the country. It empowers everyone to capture and present the world’s creativity, knowledge, and moments that matter in everyday life, presenting a wide and diverse range of content on the platform. Meanwhile, though Douyin operates only in China, its user base reached 600 million in January 2021, cementing its place as the country’s most downloaded video-sharing platform.
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 including 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.
The Complainants moreover have a large internet presence through its primary websites for these platforms, <tiktok.com> and <douyin.com>; the website addressed under <tiktok.com> had over 1.31 billion individual visitors in the six-month period between March and August 2021, ranking 18th globally and 27th in the United States. During the same period, <douyin.com> received 27.67 million visits, and it ranks 1,450th worldwide and 98th in China.
The Complainants own trademark registrations for DOUYIN, TIK TOK, and TIKTOK across various jurisdictions around the world. The Complainants have spent a considerable amount of time and money protecting its intellectual property rights. The Complainants’ trademarks DOUYIN, TIK TOK, and TIKTOK are well recognized and respected worldwide.
The disputed domain names are confusingly similar to the Complainants’ trademarks in DOUYIN, TIK TOK, and TIKTOK; the mere addition of the number “18” to the Complainants’ trademarks do not negate the confusing similarity between the disputed domain names and the Complainants’ trademarks.
The Respondent has no rights or legitimate Interests in respect of the disputed domain names: The Respondent is not sponsored by or affiliated with the Complainants in any way. The Complainants have not given the Respondent permission to use the Complainants’ trademarks in any manner, including in the disputed domain names. Moreover, the Respondent is not commonly known by the disputed domain names.
The disputed domain names were registered and are being used in bad faith by the Respondent, since it has demonstrated a knowledge of and familiarity with the Complainants’ trademarks and business. The fact that the term “douyin” lack any meaning when separated from the Complainants, and it is not similar to “tik tok”, and “tiktok” in the slightest, shows that the Respondent must have known of the Complainants and their trademarks when registering the disputed domain name.
Additionally, the Respondent is using the disputed domain names to direct internet users to a website offering an app called “Tiktok 18+” that features “Adult Videos on Tiktok”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In the present case the Complainants are Bytedance Ltd, United Kingdom, and Beijing Bytedance Technology Co. Ltd, China (“multiple Complainants”). Since the Complainants submit their evidence together and therefore showing their common grievance against the Respondent, and the Respondent’s conduct has affected the Complainants in a similar fashion, it is this Panel’s view that it is equitable and procedurally efficient to permit this Complaint filed by multiple Complainants against a single Respondent.
According to paragraph 4(a) of the Policy, the Complainants must prove that
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants submitted evidence, which incontestably and conclusively establishes rights in the trademarks DOUYIN, TIK TOK, and TIKTOK.
The Panel finds that the disputed domain names are confusingly similar to the Complainants’ registered distinctive marks DOUYIN, TIK TOK, and TIKTOK since they entirely contain these trademarks and only adds the numbers “18”.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that suffixes such as “me”, “info”, “top”, “xyz” as generic Top-Level Domains are generally disregarded.
The Panel therefore finds that the Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Respondent failed to submit a formal Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainants) and the Complainants’ contentions that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent has no connection or affiliation with the Complainants, and the Respondent has not received any license or consent, express or implied, to use the Complainants’ trademarks DOUYIN, TIK TOK or TIKTOK in a domain name or in any other manner, lead the Panel to the conclusion that the Complainants have made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainants.
The Panel therefore finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainants must show that:
- the disputed domain names were registered by the Respondent in bad faith, and
- the disputed domain names are being used by the Respondent in bad faith.
The Complainants have a multitude of trademark rights around the world in the terms “douyin”, “tik tok”, and “tiktok” since 2018 (registration date) onwards and also offer their services especially on their website under the domain names <douyin.com> and <tiktok.com>. The disputed domain names were registered on June 26, 2019 and June 16, 2020 respectively.
The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain names without knowledge of the Complainants’ rights since the marks DOUYIN, TIK TOK, and TIKTOK are well known around the world and reproduced in the disputed domain names in its entirety, supplemented by the number “18” which indicates, that the service provided under the disputed domain names is indented for adults; in fact, in adding the number “18” in connection with the marks TIK TOK, TIKTOK, and DOUYIN rather strengthen the impression that the disputed domain names are in some way connected to the Complainants’ services, and at least the Respondent may be seen to free ride on the reputation of the Complainants’ and their trademarks TIK TOK, TIKTOK, and DOUYIN.
Moreover, the fact that the term “douyin” it is not similar to the terms “tik tok” or “tiktok” at all is a clear indication for this panel that the Respondent must have been aware of the Complainants’ and their trademarks when registering the disputed domain names.
These facts lead this Panel to the conclusion that the disputed domain names were registered in bad faith by the Respondent.
The Respondent moreover used the disputed domain names to direct internet users to a website offering an app called “Tiktok 18+” featuring “Adult Videos on Tiktok” which is not connected to or authorized by the Complainants.
This active use of the disputed domain names by the Respondent clearly constitutes bad faith use since it takes unfair advantage of the reputation of the Complainants’ well-known trademarks DOUYIN, TIK TOK, and TIKTOK, and in so doing to disrupt the Complainants’ business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement.
On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain names were registered and are being used 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 names, <douyin18.me>, <tiktok18.info>, <tiktok18.top>, and <tiktok18.xyz> be transferred to the Complainant.
Date: December 8, 2021