The Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Protection Services, Inc., United States of America / Hoang Xuan, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, 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 October 19, 2020 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 October 20, 2020. On October 23, 2020, the Complainant sent an email to the Center to request the suspension of the proceeding in order to explore settlement with the Respondent. On October 25, 2020, the Center notified the Parties of the suspension of the proceeding. On November 25, 2020, the Complainant sent an email to the Center requesting the reinstitution of the proceeding. On December 1, 2020, the Center reinstituted the proceeding. 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. On December 10, 2020, December 16, 2020, and December 22, 2020, the Respondent sent emails to the Center stating that it would like to explore the settlement with the Complainant. On December 17, 2020, the Complainant sent an email to the Center claiming that it would like to continue with the proceeding. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on January 14, 2021. The Center appointed Knud Wallberg as the sole panelist in this matter on January 19, 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 owns and provides content platforms that enable people to connect by creating content through machine learning technology, including TikTok. TikTok is one of the Complainant’s platforms and applications for its video-sharing social networking services and was launched outside China in May 2017. TikTok is available in more than 150 different markets, in 75 languages, and is recognized as the leading destination for short-form mobile video. The Complainant, together with its subsidiary, TikTok Information Technologies UK Limited, is also the owner of trademark registrations for TIK TOK across various jurisdictions, including: - United States trademark number 5653614 for TIK TOK, registered on January 15, 2019, for goods and services in international classes 9, 38, 41 and 42; - European Union trademark number 017913208 for TIK TOK, registered on October 20, 2018 for goods and services in international classes 9, 25, 35, 42 and 45; and, - Vietnamese trademark number 40344939000 for TIK TOK, registered on February 17, 2020, for goods and services in international classes 9, 38 and 41. The Complainant also owns and operates its primary website at “www.tiktok.com” and launched TIK TOK for Business service in June 2020. The disputed domain name was registered on September 10, 2020, which prior to being locked, redirected Internet users to a page on the Complainant’s official website, “www.tiktok.com/business/en/” for “TIK TOK for Business”. At the time of the decision, the disputed domain name does not resolve to an active web site. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the TIK TOK trademark in which it has rights. The disputed domain name incorporates the trademark in its entirety and differs from the trademark only by the addition of the term “business”. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, nor has the Respondent been authorized or allowed by the Complainant to make any use of its TIK TOK trademark. Furthermore, there is nothing that suggests that the Respondent has been commonly known by the disputed domain name, nor does the Respondent’s use of the disputed domain name to redirect to the Complainant’s official website constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the name. Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. It is thus inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademark. On the contrary, by registering a domain name that incorporates the Complainant’s TIK TOK trademark in its entirety and by adding the related term “business” as prefix, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s trademark and its business. The Respondent’s use of the disputed domain name to redirect to the Complainant’s official website is likely to cause confusion among Internet users as to the source of the disputed domain name, which constitutes bad faith use. Since the Respondent may at any time resume this use and since it is implausible to think of any good faith use to which the domain name may be put, the Respondent’s registration and holding of the disputed domain name constitutes bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, as mentioned above the Respondent has sent emails to the Center on December 10, 2020 with the following content: “Ok, please remove this domain. Thank you”; on December 15, 2020 with the following content: “Hello. Please remove this domain. Thank you”; on December 16, 2020 with the following content: “Yes i would like to suspend the present dispute to explore settlement talks. Thank you”; and, on December 22, 2020 with the following content “I want to remove this lawsuit, I’m just the domain buyer for the household”. 6. Preliminary Issue: Respondent’s willingness to “remove” the Disputed Domain Name As far as the Respondent’s willingness to “remove” the disputed domain name the Complainant stated in an email of December 17, 2020 that “As previously requested on November 25, 2020, the Complainant would like to continue with the proceedings”. The Complainant thus requests the Panel to decide the case. In such cases a UDRP panel has different possible courses to follow, as outlined in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the present case the Respondent’s reply is ambiguous and does clearly not assent to the claims put forward in the Complaint that the registration and use of the disputed domain name was done in bad faith as stipulated in paragraph 4(a) of the Policy and to the request that the disputed domain name be transferred. Under such circumstances the Panel agrees with the UDRP panel in Research In Motion Limited v. Privacy Locked LLC / Nat Collicot,WIPO Case No. D2009-0320, that the Panel must satisfy itself that the three elements of paragraph 4(a) of the Policy are in fact present before granting the requested remedy. Considering all the circumstances of the present case, the Panel will therefore proceed to review the facts of the case and subsequently make a decision on the merits. 7. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark TIK TOK, since the disputed domain name contains this mark in its entirety together with the descriptive term “business”. See section 1.8 of WIPO Overview 3.0. The generic Top-Level Domain (“gTLD”) “.net” is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark TIK TOK. Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this. On the contrary, the content of the above cited emails from the Respondent in Section 6 support a finding that the Respondent lacks any rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, including the evidence on record of the use and worldwide reputation of the Complainant’s trademark TIK TOK and the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith. The disputed domain name has been used to redirect to the Complainant’s official website. By doing so the Respondent has obviously tried to capture web traffic that might otherwise be looking for the Complainant in general or for the Complainant’s “TIK TOK For Business” initiative in particular, which constitutes bad faith use. Although this use appears to have ceased the Respondent still retains control over the disputed domain name and may thus at any time resume the use of the disputed domain name. In addition, as it was first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See section 3.3 of the WIPO Overview 3.0. Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark TIK TOK and the gTLD “.net”, that the Respondent has not substantively replied to the Complainant’s contentions, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 name Knud Wallberg
Sole Panelist
Date: February 3, 2021
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