WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bytedance Ltd. v. Registration Private, Domains By Proxy, LLC / Fotios Tsiouklas, Kickspan

Case No. D2020-2439

1. The Parties

The Complainant is Bytedance Ltd., Cayman Islands, 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”) / Fotios Tsiouklas, Kickspan, Australia, represented by Mukushi Legal, Australia.

2. The Domain Names and Registrars

The disputed domain name <tiktoks.com> is registered with GoDaddy.com, LLC, and the disputed domain names <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, and <tiktokplanet.com> are registered with Dreamscape Networks International Pte Ltd. These two registrars of the disputed domain names are collectively hereinafter referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2020, with respect to the disputed domain name <tiktoks.com>. On September 21, 2020, the Center transmitted by email to GoDaddy.com, LLC, a request for registrar verification in connection with the disputed domain name. On September 22, 2020, GoDaddy.com, LLC, 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 September 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On September 27, 2020, the Complainant filed an amended Complaint, in which it added the disputed domain names <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, and <tiktokplanet.com>. On September 29, 2020, the Center transmitted by email to Dreamscape Networks International Pte Ltd. a request for registrar verification in connection with these additional disputed domain names. On September 23, October 2 and 5, 2020, the Respondent contacted the Center. On October 6, 2020, Dreamscape Networks International Pte Ltd. transmitted by email to the Center its verification response confirming the Respondent and providing contact information.

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 October 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2020. On October 22, 2020, the Respondent requested a seven-day extension to the Response filing period. On October 26, 2020, the Complainant contacted the Center, objecting to the Respondent’s extension request. On October 28, 2020, the Center informed the Parties that the Response due date was extended until November 8, 2020. No Response was filed within the extended due date. On November 20, 2020, the Center informed the Parties that it would proceed with the panel appointment process.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 18, 2020. 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, which operates a series of online content platforms. TikTok is the Complainant’s platform and mobile application for video sharing social networking services, and it is available in more than 150 markets in 75 languages. TikTok was launched outside China in May 2017 and became the most downloaded application in the United States in October 2018. The application has been downloaded by more than 500 million users in Google Play, and is ranked as “#1 in Entertainment” in the Apple Store and “#3 in Social” in Amazon.

The official website of the Complainant for its TikTok platform is located at the domain name <tiktok.com>. According to SimilarWeb.com, this website had a monthly average of 157.08 million visitors between September 2019 and February 2020, and Alexa.com ranks it as the 409th most popular website in the world and the 336th most popular in the United States.

The Complainant is the owner of the following trademark registrations for the sign “TIK TOK” (the “TIK TOK trademark”):

- the trademark TIK TOK with registration No. 6064328, registered in Japan on July 20, 2018, for goods and services in International Classes 25, 35, 41, 42, and 45;
- the trademark TIK TOK with registration No. 5653614, registered in the United States on January 15, 2019, for goods and services in International Classes 9 (with a first use in commerce on May 31, 2017), 38, 41, and 42 (with a first use in commerce on August 2, 2018); and
- the trademark TIK TOK with registration No. 1949117, registered in Australia on April 24, 2019, for goods and services in International Classes 9, 38, and 41.

The disputed domain name <tiktoks.com> was created on April 21, 2018. According to the Complainant, it was transferred to the Respondent between October 17 and December 10, 2019. At the time of filing of the Complaint, it resolved to a website offering services to increase the fame of users of the TikTok platform.

The disputed domain names <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, and <tiktokplanet.com> were created on December 7, 2019. They are currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s TIK TOK trademark, which they reproduce in its entirety. The disputed domain name <tiktoks.com> varies from the TIK TOK trademark just by the addition of the letter “s”, while the disputed domain names <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, and <tiktokplanet.com> include the terms “grow”, “charts”, “exposure”, and “planet”. According to the Complainant, these additional elements and the removal of the space between the elements “tik” and “tok” in the disputed domain names does not negate the confusing similarity between them and the TIK TOK trademark.

The Complainant adds that the Respondent uses the disputed domain name <tiktoks.com> for a website that offers services to artificially boost the fame of user accounts on the Complainant’s TIK TOK social media platform without the Complainant’s authorization. According to the Complainant, this is further evidence that this disputed domain name is confusingly similar to the TIK TOK trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names, as it is not sponsored by or affiliated with the Complainant, the Complainant has not authorized the Respondent to use the TIK TOK trademark, and the Respondent is not commonly known by the disputed domain names.

According to the Complainant, the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain names. The disputed domain name <tiktoks.com> resolves to a website that offers services to artificially increase the users’ fame on their TikTok accounts. It points out that these services require users of the Complainant’s TikTok social media platform to log in to the Respondent’s application with their TikTok account credentials, and that they use automatic scripts to boost engagement for users on the TikTok platform, which actions violate the Complainant’s Terms of Use policy. The Complainant adds that the Respondent is using the disputed domain names <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, and <tiktokplanet.com> to redirect Internet users to parked webpages that lack content.

The Complainant contends that the disputed domain names were registered and are being used in bad faith.

It submits that it has marketed and sold its services under the TIK TOK trademark since 2017, and that it and its TIK TOK trademark are known internationally and the trademark is registered in numerous countries, including in Australia, where the Respondent is based. The Complainant submits that the disputed domain name <tiktoks.com> was transferred to the Respondent between October 17 and December 10, 2019, and notes that a media article by DailyMail.co.uk published in June 2020 reported that the Respondent acquired this disputed domain name “six months ago”, which further narrows the date range to December 2019. The other disputed domain names were similarly registered in December 2019, which is after the Complainant registered its TIK TOK trademark and registered its <tiktok.com> domain name in 2018.

According to the Complainant, by registering five domain names that incorporate the Complainant’s TIK TOK trademark, and with its statements reflected in the media, the Respondent has demonstrated familiarity with the Complainant’s brand and business. The Complainant also notes in this regard the presence of a disclaimer on the website at the disputed domain name <tiktoks.com>.

The Complainant submits that the disputed domain name <tiktoks.com> is a misspelling of the Complainant’s TIK TOK trademark and of its <tiktok.com> domain name and has intentionally been designed to closely mimic them. The Respondent has selected and used this disputed domain name to intentionally confuse unsuspecting Internet users into visiting its website, only to then offer a disclaimer for the lack affiliation with the Complainant. According to the Complainant, this “bait-and-switch” tactic is used by the Respondent to profit from the confusion by offering services to boost user fame on the Complainant’s TIKTOK social media platform without authorization from the Complainant and in violation of the Complainant’s Terms of Use policy, which could result in the suspension of the accounts of the Complainant’s customers, thereby disrupting the Complainant’s business.

The Complainant states that the disputed domain names <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, and <tiktokplanet.com> do not resolve to active websites, but their passive holding can constitute a factor in finding bad faith registration and use pursuant to the Policy, since they are confusingly similar to the TIK TOK trademark, and can only be taken as intending to cause confusion among Internet users as to their source. The Complainant adds that the Respondent has registered five disputed domain names that each infringe the Complainant’s TIK TOK trademark, which demonstrates that the Respondent has engaged itself in a pattern of cybersquatting.

B. Respondent

The Respondent has not submitted a Response.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and,

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the TIK TOK trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLDs of the disputed domain names.

The relevant parts of the disputed domain names incorporate the TIK TOK trademark in combination with the dictionary words “grow”, “charts”, “exposure”, and “planet”, or with the addition of the letter “s”, and the TIK TOK trademark is clearly recognizable in each of the disputed domain names. Where the relevant trademark is recognizable within a disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the TIK TOK trademark in which the Complainant has rights.

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.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the TIK TOK trademark, is not known by the disputed domain names, and is not carrying out a bona fide use of the disputed domain names. According to the Complainant, the Respondent uses the disputed domain name <tiktoks.com> for a website that offers services to artificially increase the users’ fame on their TikTok accounts against payment. It points out that these services require users of the Complainant’s TikTok social media platform to log in to the Respondent’s application with their TikTok account credentials, and that the Respondent’s application uses automatic scripts to boost engagement for users on the TikTok platform, which actions violate the Complainant’s Terms of Use policy. According to the Complainant, these activities may disrupt the business of the Complainant. The Complainant further notes that the other disputed domain names are inactive. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a Response and has not explained why and for what purposes it has registered the disputed domain names. It has not denied the contentions of the Complainant and has not submitted any contrary evidence.

The evidence submitted by the Complainant shows that the disputed domain name <tiktoks.com> has been used for a website that offers visitors to “become tiktok famous” and describes the offered service in the following terms: “To grow your following and likes, our app automatically performs actions via your account, boost your engagement every time you post, […]”. The website offers “~1-10k Real Monthly Followers” against a weekly fee of USD 9.99. The Terms and Conditions section of the website explains that users need to use their Tiktok username and password to log in to the Respondent’s service, and that if the password is changed, the Respondent’s service (referred to as a script) will stop functioning. At the same time, the Terms of Service of the Complainant do not allow users to share their credentials with third parties and prohibit the use of automatic scripts for interaction with the TikTok platform.

The Complainant has also submitted a media article in DailyMail.com dated June 2020, which reported that “Fotios and Alan bought the domain name [<tiktoks.com>] for $2000 six months ago, as they could see the Chinese video-sharing social network was wildly popular with Millenials and Generation Z”, while the CEOmagazine.com quoted the Respondent as saying that: “A few months ago, we predicted that TikTok would become the sensation that it has, so we bought the domain name TikToks.com”.

All the above shows that the Respondent, being aware of the success and popularity of the Complainant’s TikTok platform and of its TIK TOK trademark, has registered and used the disputed domain names in an attempt to exploit this popularity to attract Internet users to the Respondent’s website at the disputed domain name <tiktoks.com>, and to offer on its services for commercial gain. The Panel therefore does not regard this conduct of the Respondent as a legitimate activity that may give rise to rights or legitimate interests of the Respondent in the disputed domain name <tiktoks.com> under the Policy.

The Panel notes the Complainant’s allegation that the Terms and Conditions section of the website at the disputed domain name <tiktoks.com> contains a disclaimer that “TikToks.com is not affiliated with TikTok or any other social networking sites”, but the Panel agrees that the presence of a disclaimer does not render the Respondent’s activities bona fide under the Policy. When users have a chance to read the disclaimer they have already been attracted to the Respondent’s website, under the impression that the disputed domain name is associated with the Complainant’s TIK TOK trademark, and would be exposed to the commercial offer of illegitimate services on it.

The other disputed domain names also incorporate the TIK TOK trademark and are confusingly similar to it. They were all registered in December 2019 on or about the date when, according to evidence submitted by the Complainant and not denied by the Respondent, the latter has acquired the disputed domain name <tiktoks.com>. In view of this, it appears likely that the other disputed domain names were registered by the Respondent as part of the same plan to target the Complainant’s TIK TOK trademark and offer the same illegitimate services to users of the TikTok platform.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Panel notes that the Complainant launched its TikTok platform outside China in May 2017, and that it grew to become the most downloaded application in the United States in October 2018. The Panel further notes that the disputed domain name <tiktoks.com> was created on April 21, 2018 (with the rest of the disputed domain names being created on December 7, 2019), but as shown by the Complainant, the disputed domain name <tiktoks.com> was acquired by the Respondent later on, apparently between October 17 and December 10, 2019.

As discussed above, the disputed domain names fully incorporate the TIK TOK trademark in combination with dictionary words or a letter. The Respondent does not deny that it has linked the disputed domain name <tiktoks.com> to a website that offers users of the Complainant’s TikTok platform to increase their popularity on the platform through the use of automatic scripts activated with the users’ credentials for access to the TikTok platform, which would violate the Complainant’s Terms of Services. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered this disputed domain name with knowledge of the Complainant and targeting the TIK TOK trademark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the TIK TOK trademark as to the affiliation or endorsement of its website and of the illegitimate services offered on it.

The fact that the other disputed domain names are currently inactive does not prevent a finding of bad faith, as they are also confusingly similar to the Complainant’s TIK TOK trademark, were registered on or close to the date when the disputed domain name <tiktoks.com> was registered, and the Respondent has not provided a plausible explanation of how it intends to use them. In view of this, it appears to the Panel as more likely than not that they were registered for the same illegitimate purpose.

Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith.

7. Decision

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 <growtiktok.com>, <tiktokcharts.com>, <tiktokexposure.com>, <tiktokplanet.com>, and <tiktoks.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 13, 2021