The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Khanh Nguyen, Viet Nam.
The disputed domain name <tiktokviet.com> is registered with CloudFlare, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 28, 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 April 29, 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 May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2021.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on June 9, 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.
The Complainant is an Internet technology company that provides video-sharing social networking services through its content platforms, which include the popular platform TikTok.
TikTok is an application which allows users to upload, search, and view short video clips. It is available in more than 150 different markets, in 75 languages. More than 500 million users have downloaded the Complainant’s TikTok application in Google Play, and TikTok is ranked number one in the entertainment category on the Apple Store.
The Complainant also operates a TikTok website at “www.tiktok.com” which shows video content and enables users to login to their profiles. This website had a total of 831.39 million visitors between September 2020 and February 2021.
The Complainant states that in September 2016 its short-video sharing platform “Douyin” was launched in China and quickly became extremely popular. The following year in May 2017 the Complainant’s platform TikTok (which has the same logo and interface as Douyin) was launched outside China. By October 2018, TikTok was the most downloaded application in the United States of America (“United States”).
The Complainant’s evidence is that among its international portfolio are the following trademark registrations which it considers are relevant to this dispute:
|
Trademark |
Jurisdiction |
Registration |
Application |
Registration |
International Class(es) |
|
TIK TOK |
Viet Nam |
40344939000 |
October 26, 2017 |
February 17, 2020 |
9, 38, |
|
TIKTOK |
India |
3853842 |
June 7, 2018 |
June 7, 2018 |
35 |
|
TIK TOK |
Hong Kong, China |
304569373 |
June 20, 2018 |
November 26, 2018 |
9, 38, |
|
TIK TOK |
Japan |
6064328 |
November 29, 2017 |
July 20, 2018 |
25, 35, |
These are collectively referred to as the “TIK TOK Mark”. The Registration Number 3853842 is also independently referred to as the “TIK TOK Logo Mark”.
The Complainant states its first use in of its TIK TOK Mark in commerce was in 2017, and that it registered its <tiktok.com> domain name in May 2018, following the launch of the platform the year before.
The disputed domain name <tiktokviet.com> was registered on September 5, 2018 (the “Relevant Date”).
The disputed domain name resolves to a website which features the TIK TOK Mark and the TIK TOK Logo Mark. At the top of the webpage a silhouetted female is pictured, with purple sky and clouds behind her. Below this picture, the website displays videos which appear to be hosted by the Complainant’s TikTok platform as well as a number of statistics appearing to be related to Vietnamese TikTok users.
The Complainant contends that:
(i) The disputed domain name is confusingly similar to the Complainant’s TIK TOK Mark.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The Respondent registered and is using the disputed domain name in bad faith.
Specifically, the Complainant states that it owns the TIK TOK Mark, and that the mark is well known in Viet Nam and internationally. It states that it quickly became a popular short-video sharing platform after it was launched outside China in 2017.
(i) Confusing similarity
The Complainant states that the TIK TOK Mark appears in the disputed domain name in its entirety and contends that the addition of a geographic term or place name “Viet” does nothing to negate the confusing similarity with the Complainant’s TIK TOK Mark.
The Complainant states the Respondent’s use of the disputed domain name to resolve to a website displaying the Complainant’s TIK TOK Logo Mark, and featuring videos and data obtained from the Complainant’s TikTok platform is further evidence that the disputed domain name is confusingly similar to the Complainant’s TIK TOK Mark.
(ii) Rights or legitimate interests
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name, because:
(a) the Respondent is not commonly known as “TikTok” or “TikTokViet”;
(b) the Respondent is not sponsored by or affiliated with the Complainant in any way; and
(c) the Complainant states it has not given the Respondent permission to use the Complainant’s TIK TOK Mark in any manner, including in a domain name.
The Complainant refers to the privacy “WhoIs” service used by the Respondent to shield its identity and says this is further evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Complainant states the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain name, because the Respondent’s use of the disputed domain name is said to be a direct effort to take advantage of the recognition and goodwill that exists in the TIK TOK Mark. The Complainant states that, by displaying a version of the Complainant’s TIK TOK Logo Mark and the TIK TOK Mark with the word “viet” in combination with a collection of videos and statistics taken from the Complainant’s platform the Respondent is imitating the Complainant and is passing off as part of the Complainant’s platform.
The second reason the Complainant states the Respondent’s use of the disputed domain name is not for a bona fide offering of goods or services or legitimate, noncommercial fair use is because videos on the Complainant’s TikTok platform which the Respondent shows on its website would otherwise only be able to be viewed by users on the TikTok platform. The Complainant says the Respondent is therefore directly competing with the Complainant.
The Complainant states that the Respondent is acting in contravention of the Complainant’s TikTok application’s terms of service by collecting and analyzing TikTok data and by featuring TikTok videos which display the TIK TOK Logo Mark in the top right corner.
The Respondent registered the disputed domain name on September 5, 2018, which the Complainant states was significantly after the Complainant filed for registration of its TIK TOK Mark, and significantly after the Complainant’s first use of the TIK TOK Mark in commerce in 2017. The Complainant further notes the disputed domain name’s registration date was after the Complainant obtained its <tiktok.com> domain name in May 2018.
(iii) Registration and use in bad faith
The Complainant refers to its international reputation and goodwill and says that, through the text of the disputed domain name and by its website content the Respondent has demonstrated knowledge and familiarity with the Complainant’s TIK TOK Mark. It states that it is not plausible the Respondent was not aware of the Complainant’s TIK TOK Mark at the time the disputed domain name was registered.
The Complainant says the Respondent has intentionally attempted to attract internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s platform and its TIK TOK Mark.
The Complainant says the Respondent is using the disputed domain name to compete with and disrupt the Complainant’s own services by showing videos which would otherwise only be able to be viewed by users on the official TikTok platform.
The Complainant says the Respondent has engaged in a pattern of bad faith registrations because it was the subject of Sister Sister LLC and James Charles Dickinson p/k/a “James Charles" v. Khanh Nguyen Van, NAF Case No. FA1911687 and currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses such as Honda Motor Co Ltd and Nike Innovate CV.
Finally, the Complainant states that the Respondent’s failure to respond to a cease-and-desist letter the Complainant sent is a further indication of use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a)(i) of the Policy the Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Based on the evidence submitted by the Complainant, the Panel is satisfied that it has rights in the TIK TOK Mark and TIK TOK Logo Mark.
The disputed domain name incorporates the Complainant’s TIK TOK Mark in full. It contains the additional word “viet”. The word “viet” in the disputed domain name is clearly an abbreviation of “Viet Nam” given the language and Vietnamese content of the website to which the disputed domain name resolves. Dictionaries such as Collins dictionary refer to “viet” as an abbreviation for “Viet Nam” or “Vietnamese”.
The Panel finds that the addition of the geographical term “Viet” to the TIK TOK Mark in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the TIK TOK Mark, which remains clearly visible. In Philip Morris Products S.A. v. Whois Privacy Protection Service by onamae.com / Tran Xuan Quy, WIPO Case No. D2019-1368 the Panel similarly found “the mere addition of a geographic descriptor “Viet” does not avoid a finding of confusing similarity under the first element”.
Accordingly, the Panel finds the Complainant has satisfied the first UDRP element, in showing that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, among other circumstances, showing any one of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the TIK TOK Mark.
Further the Panel is satisfied that the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The Panel accepts the Complainant’s evidence that the disputed domain name resolves to a website which hosts content and displays statistics from the Complainant’s TikTok platform, in breach of the TikTok terms of service. It accepts the Respondent is using the TIK TOK Logo Mark and the TIK Tok Mark on the website the disputed domain name resolves to. The Panel finds that the disputed domain name is therefore being used for illegitimate, commercial or unfair purposes and with the intention of misleadingly diverting Internet users.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons taken together:
(i) The Complainant’s trademark application for the TIK TOK Mark in Viet Nam was filed on October 26, 2017. As at the Relevant Date of September 5, 2018, the Complainant had registrations for the TIK TOK Mark and or TIK TOK Logo Mark in Japan and India.
At the time the disputed domain name was registered (and ever since) the Complainant’s TIK TOK Mark has enjoyed a significant international reputation. For example, as at October 2018, a month after the disputed domain name was registered, the Complainant’s TikTok platform was recorded as the most popular application in the United States. Therefore, the Panel is satisfied that the Complainant’s TIK TOK Mark was internationally well known, and that the Respondent was aware of the TIK TOK Mark, and its associated goodwill at the time of registration. A trademark or search engine search by the Respondent in 2018 would have revealed the Complainant’s trademark rights in the TIK TOK Mark, the Complainant’s own domain name (which was registered a few months prior), and the TikTok platform’s popularity.
(ii) The Panel finds that the disputed domain name incorporates the Complainant’s unusual and distinctive trademark in its entirely. This was clearly not a coincidence and together with the addition of the geographic term “Viet” shows that the disputed domain name was likely registered for the purpose of misleadingly attracting or diverting Internet users.
(iii) The words “Tik Tok” have no ordinary meaning in Vietnamese and the Panel considers it is unlikely a third party seeking to establish a website in Vietnamese would legitimately choose the words “Tik Tok”, unless seeking to create an association with the Complainant’s well-known international video-sharing platform and brand.
(iv) The mere registration of a domain name that is identical or confusingly similar to a widely-recognized or well-known trademark by someone who has no connection whatsoever with the trademark can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
(v) Because the disputed domain name resolves to a website which displays the Complainant’s TIK TOK Mark and Logo Mark in combination with videos from the TikTok platform, it would defy common sense to believe that the Respondent coincidentally selected the precise disputed domain name without any knowledge of the Complainant or its trademarks. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) The disputed domain name is so obviously connected to the Complainant’s well-known TIK TOK Mark that its use by someone with no connection with the Complainant’s platform indicates opportunistic bad faith. See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226.
(ii) The Respondent’s use of the disputed domain name creates a strong likelihood of confusion with the TIK TOK Mark and is therefore likely to mislead Internet users as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The impression given by the disputed domain name and its website content would cause consumers to believe the Respondent is somehow associated with the Complainant.
(iii) The Respondent’s website imitates the TikTok platform by displaying the TIK TOK Mark and the TIK TOK Logo Mark and reproducing video and statistical content obtained from the platform. The Panel is therefore satisfied in accordance with the Policy, paragraph 4(b)(iv) that the Respondent has intentionally attempted to attract internet users to the Respondent’s website for commercial gain. It is well established that such conduct constitutes registration and use in bad faith. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
(iv) The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business because the Respondent uses the disputed domain name to display videos which would otherwise only be able to be viewed on the Complainant’s TikTok platform. This disruption is a further indicator of use in bad faith. See LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, WIPO Case No. D2019-0245.
(v) The Respondent’s website seems to violate the TikTok application’s terms of service, which in the circumstances of this case, and noting the use of the disputed domain name, further supports the Panel’s finding on the Respondent’s bad faith. In Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Yan Jiang and Whois Domain Admin / Li Dan, WIPO Case No. D2020-2092, similar uses of a disputed domain name connected to breaches of Instagram’s Terms of Use were found to be evidence of use in bad faith.
(vi) The Panel had regard to the lack of any response from the Respondent and draws adverse inferences from that.
Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 <tiktokviet.com> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: June 23, 2021
