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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bytedance Ltd. v. Registration Private, Domains By Proxy, LLC / shata th

Case No. D2021-0359

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 / shata th, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <tiktoke.cash> and <tiktokecash.com> are both registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021 in connection with the disputed domain name <tiktokecash.com>. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <tiktokecash.com>. On February 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <tiktokecash.com>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On February 9, 2021, the Complainant transmitted by email to the Center a request to add another domain name <tiktoke.cash> to the Complaint. The amended Complaint with the disputed domain name <tiktoke.cash> added was received by email on February 10, 2021 by the Center. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <tiktoke.cash>. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <tiktoke.cash>. The Center sent an email communication to the Complainant on February 15, 2021 providing the registrant and contact information disclosed by the Registrar for the disputed domain names <tiktokecash.com> and <tiktoke.cash>, and inviting the Complainant to submit an amendment to the Complaint.

The Complainant filed an amended Complaint adding the registrar-provided registrant information to the Complaint on February 18, 2021.

The Center verified that the Complaint together with the amended Complaints 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 February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on March 17, 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 operates a series of content platforms, including the “TikTok” video sharing social networking 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. More than 500 million users have downloaded the Complainant’s TikTok application in Google Play and the Complainant’s primary “TikTok” website at <tiktok.com> had a total of 728.47 million visitors between July and December 2020 as provided in the Complaint. The Complainant owns various trade mark registrations worldwide for its TIK TOK trade mark (the “TIK TOK Mark”) and in particular the United States trade mark registration 5653614 for TIK TOK registered on January 15, 2019, with a first use in commerce date in 2017, the International trade mark registration 1485318 for TIK TOK, registered on March 19, 2019, and United States logo mark registration 5863551, registered on September 17, 2019.

The disputed domain names were registered on November 12, 2020 and January 28, 2021 respectively. They resolve to websites that feature the TIK TOK logo mark and uses the TIK TOK Mark.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns trade mark registrations for its TIK TOK Mark as noted above. It says that its mark is wholly incorporated into each of the disputed domain names. It asserts that simply adding the generic term “ecash” or the letter “e” to the end of the TIK TOK Mark in the respective disputed domain names does not negate the confusing similarity between each of the disputed domain names and the Complainant’s TIK TOK Mark.

The Complainant says that the Respondent is not sponsored by or affiliated with it in any way. Furthermore, it says that it has not given the Respondent any licence, authorisation or permission to use the Complainant’s TIK TOK Mark in any manner, including in domain names. The Complainant also asserts that the Respondent is not commonly known by either of the disputed domain names.

The Complainant adds that the Respondent is not making a bona fide offering of goods or services or a legitimate, noncommercial fair use of the disputed domain names. By displaying the Complainant’s TIK TOK logo at the top of the website to which each of the disputed domain names resolve the Complainant says that the Respondent is taking advantage of the fame and goodwill that the Complainant has developed in its brand and logo. It says that the Respondent is not only using the confusingly similar disputed domain names, but is also confusing Internet users into believing that some sort of affiliation exists between it and the Complainant. The inclusion of the Complainant’s TIK TOK Mark (including the TIK TOK logo) incorrectly creates the appearance that the disputed domain names and their websites are somehow affiliated with the Complainant. The Complainant says that this amounts to the Respondent exploiting the reputation attaching to the Complainant’s TIK TOK Mark in order to attract traffic to its websites, and to ultimately pass itself off as the Complainant. This, says the Complainant, is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain names under the Policy.

The Complainant also notes that on the websites to which the disputed domain names resolve the Respondent offers for sale various membership packages to TikTok users and claims to be able to “successfully bring in TikTok users’ traffic” and “generate organic reach”. This, says the Complainant, suggests that the Respondent is generating fake followers, likes, or views, for commercial purposes, which is contrary to TikTok’s Terms of Service. It says that the Respondent’s use of the confusingly similar disputed domain names to deceive Internet users and foster conduct against TikTok’s Terms of Service, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. The Complainant notes also that at the time of filing the Complaint the Respondent was using a privacy WhoIs service which past panels have also found to equate to a lack of legitimate interest.

In relation to registration in bad faith, the Complainant says that its TIK TOK Mark and business is known internationally and that it has marketed and sold its goods and services using this trade mark since 2017, which is well before the Respondent’s registration of the disputed domain names. The Complainant submits that the TIK TOK Mark is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it in the disputed domain names, strongly implies bad faith. Further, says the Complainant, in circumstances that the disputed domain names incorporate the Complainant’s TIK TOK Mark and resolve to websites that display the Complainant’s TIK TOK Mark (including the TIK TOK logo), it defies common sense to believe that the Respondent coincidentally selected the disputed domain names without any knowledge of the Complainant and of its trade marks.

As far as use in bad faith is concerned, the Complainant says that the Respondent has created a likelihood of confusion with the Complainant and its trade marks by displaying the Complainant’s TIK TOK Mark (including the TIK TOK logo) on the websites at the disputed domain names and by then attempting to profit from such confusion by offering for sale membership programs which artificially generate traffic (followers, likes, or views) for TikTok users against the Complainant’s Terms of Service. As such, alleges the Complainant, the Respondent is attempting to cause consumer confusion. It says that the impression given by the disputed domain names and at the websites to which they resolve, would cause Internet users to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not. The Respondent’s actions, says the Complainant, create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names and the Respondent is thus using the fame of the Complainant’s trade marks to improperly increase traffic to the websites at the disputed domain names for the Respondent’s own commercial gain in terms of paragraph 4(b)(iv) of the Policy.

The Complainant also alleges that the Respondent’s use of the disputed domain names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the Policy because the disputed domain names are confusingly similar to the Complainant’s trade marks and the websites to which the disputed domain names resolve are being used to offer for sale membership programs which artificially generate traffic for TikTok users without the Complainant’s authorisation. This, says the Complainant, is a violation of its Terms of Service policy, which could result in the suspension of the accounts of the Complainant’s customers and in doing so disrupt the Complainant’s business.

Finally, the Complainant notes that at the time of initial filing of the Complaint, the Respondent had employed a privacy service to hide its identity which past panels have held to be further evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its TIK TOK Mark and in particular the United States word mark registration 5653614 for TIK TOK registered on January 15, 2019, with a first use in commerce date in 2017.

The TIK TOK Mark is wholly incorporated into each of the disputed domain names. The addition of the term “ecash” in the disputed domain name <tiktokecash.com> or the letter “e” to the end of the TIK TOK Mark in the disputed domain name <tiktoke.cash> does not negate the confusing similarity between each of the disputed domain names and the Complainant’s TIK TOK Mark. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s registered TIK TOK Mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not sponsored by or affiliated with it in any way. It has also alleged that it has not given the Respondent any licence, authorisation, or permission to use the Complainant’s trade mark in any manner, including in the disputed domain names. The Complainant also asserts that the Respondent is not commonly known by either of the disputed domain names.

The Panel finds that the Respondent is not making a bona fide offering of goods or services or a legitimate, noncommercial fair use of the disputed domain names. By reproducing the Complainant’s TIK TOK logo mark at the top of the websites to which each of the disputed domain names resolve and by using the TIK TOK Mark on the website the Respondent is clearly seeking to take advantage of the goodwill attaching to the Complainant’s trade marks. The inclusion of the Complainant’s TIK TOK Mark (including the TIK TOK logo) incorrectly creates the appearance that the disputed domain names and their websites are somehow affiliated with the Complainant and the Panel agrees with the Complainant that this appears to amount to the Respondent exploiting the reputation attaching to the Complainant’s TIK TOK Mark in order to divert Internet users to its websites and to ultimately pass itself off as the Complainant.

The Complainant has also alleged that on the websites to which the disputed domain names resolve the Respondent offers for sale various membership packages to TikTok users and claims to be able to “successfully bring in TikTok users’ traffic” and “generate organic reach”.The Complainant suggests that the Respondent is generating fake followers, likes, or views, for commercial purposes, which is contrary to TikTok’s Terms of Service. It says that the Respondent’s use of the confusingly similar disputed domain names to deceive Internet users and foster conduct against TikTok’s Terms of Service, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. It also notes that at the time of filing the Complaint the Respondent was using a privacy WhoIs service which past panels have also found to equate to a lack of legitimate interest.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in either of the disputed domain names. The Respondent has failed to explain its conduct and has not rebutted the Complainant’s case. As a result, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided evidence that it has used its TIK TOK Mark internationally in connection with its business and that it has marketed and sold its goods and services using this trade mark since 2017, which is well before the Respondent’s registration of the disputed domain names. In addition, the Panel notes that United States word mark registration 5653614 for TIK TOK was registered on January 15, 2019 long before the registration of the disputed domain names on November 12, 2020 and January 28, 2021 respectively.

The Complainant’s TIK TOK Mark is highly distinctive and has a very substantial Internet presence so that the coincidental registration of each of the disputed domain names including the TIK TOK Mark seems extremely unlikely. In any event, in circumstances that the disputed domain names incorporate the Complainant’s TIK TOK Mark and resolve to websites that display the Complainant’s TIK TOK Mark and separate logo, the Panel infers that the Respondent was well aware of the Complainant’s business and trade marks when it registered each of the disputed domain names.

Under paragraph 4(b)(iv) of the Policy, the use of a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 a web site or location or of a product or service on the website or location, amounts to evidence of registration and use in bad faith.

The disputed domain names both feature the Complainant’s distinctive TIK TOK Mark as their first and dominant element. At the time of filing of this Complaint or before then, they each resolved to a website featuring the Complainant’s mark and logo which masqueraded as if it belonged to or was affiliated to the Complainant and thereby created a likelihood of Internet user confusion as to the source, sponsorship, affiliation, or endorsement of each of the disputed domain names. It is apparent that the Respondent was using the renown attaching to the Complainant’s trade marks to increase traffic to the websites at the disputed domain names for the Respondent’s own commercial gain. Although it is uncertain whether the Respondent was in fact offering for sale membership programs which artificially generated traffic (followers, likes, or views) for TikTok users, this is immaterial in circumstances that the Panel finds that the Respondent was clearly using the websites at the disputed domain names for its own commercial gain and that the requirements of paragraph 4(b)(iv) of the Policy have been made out. In addition, the fact that at the time of filing the Complaint the Respondent was using a privacy WhoIs service only serves to reinforce the Panel’s view of the Respondent’s bad faith.

For these reasons, the Panel finds that the Respondent has both registered and used the disputed domain names in bad faith and that the Complaint also succeeds under this element of the Policy.

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, <tiktoke.cash> and <tiktokecash.com>, be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: March 31, 2021

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