Complainant is Bytedance Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Nguyễn Văn Nhựt, 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 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 3, 2020. On November 2, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on November 3, 2020. Respondent did not comment on the language of 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 4, 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 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 Toutiao, Douyin, and TikTok. TikTok is one of Complainant’s platforms or applications (“app(s)”) for its videosharing 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. TikTok has global offices including Los Angeles, New York, London, Paris, Berlin, Dubai, Mumbai, Singapore, Jakarta, Seoul, and Tokyo. 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; - European Union trademark number 017913208 for TIK TOK, registered on October 20, 2018; - Vietnamese trademark number 40344939000 for TIK TOK, registered on February 17, 2020. Complainant also owns and operates its primary website at “www.tiktok.com”, and launched TIK TOK for Business in June 2020 to provide marketing and advertising for businesses to engage with the Tik Tok community. Complainant indicated that it had requested a lock on the Domain Name’s website on the basis of phishing on September 30, 2020 and the website content was removed in early October 2020. The Center has confirmed with the Registrar that such a lock had been requested and the Registrar had confirmed that the lock status had been applied and will remain in place through the pendency of the current UDRP proceeding. Respondent registered the Domain Name on September 17, 2020, which prior to being locked, redirected Internet users to a third party website, with content in English, that copied and attempted to duplicate Complainant’s official website with the look and feel, Complainant’s trademark and logo, as well as content located on Complainant’s website at “https://getstarted.tiktok.com/”. After the lock status had been applied, and at the time of the Decision, the Domain Name resolves to an inactive site. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the TIK TOK marks and owns many domain names incorporating the TIK TOK mark. Complainant contends that Respondent registered and is using the Domain Name, which incorporate Complainant’s TIK TOK mark in its entirety, with two added dictionary terms “ads” and “business” in the Domain Name Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant submits in its communication to the Center on November 3, 2020 and in the Complaint that the language of the proceeding should be English. Complainant indicates that the registration agreement of the Domain Name is in Vietnamese. According to the information received from the Registrar, the language of the Registration Agreement of the Domain Name is in Vietnamese. Complainant contends that the Domain Name was registered in characters using the Roman alphabet, and that the Domain Name did not have any specific meaning in the Vietnamese language; Complainant also contends, and the record shows, that prior to the Domain Name being locked, the Domain Name resolved to a website that featured various phrases in English, including “Sign up today and get up to $4,500 in ad credit”, which indicates Respondent’s familiarity with the English language. Complainant further contends that it does not understand nor speak Vietnamese, that the translation of all case relevant documents would unfairly disadvantage Complainant, and that it would be too cost-intensive and the proceeding would be unnecessarily delayed if the proceedings were to be held in Vietnamese. In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Vietnamese and English. Respondent chose not to respond to the Complaint or comment on the language of the proceeding. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to conduct the proceeding in Vietnamese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the TIK TOK marks, which have been registered since at least as early as 2018, well before Respondent registered the Domain Name on September 17, 2020 as noted above. Complainant has also submitted evidence, which supports that TIK TOK is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark TIK TOK. With Complainant’s rights in the TIK TOK marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s TIK TOK trademark. This mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Name. The voluntary addition of two added dictionary terms “ads” and “business” in the Domain Name Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the TIK TOK marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the TIK TOK trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that prior to being locked by the Registrar, the Domain Name resolved to a website that featured content in English, including the phrase “Sign up today and get up to $4,500 in ad credit”. The website also redirected Internet users to a third party website that copied and attempted to duplicate Complainant’s official website with the look and feel, Complainant’s trademark and logo, as well as content located on Complainant’s website at “https://getstarted.tiktok.com/”. The content on the website also seeks to obtain visitors’ personal information to acquire access to personal information to, such as, sensitive financial information. In creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent attempted to deceive unsuspecting Internet users into divulging their personal information by attempting to pass off as Complainant’s TikTok for Business website at “https://getstarted.tiktok.com/” to entice Internet users to sign up and pay for new accounts. After being locked by the Registrar, and at the time of the Decision, the Domain Name resolves to an inactive site. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 finds that Complainant provided ample evidence to show that registration and use of the TIK TOK marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including Viet Nam, where Respondent operates. Therefore, Respondent was likely aware of the TIK TOK marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known TIK TOK trademark in its entirety with two additional terms as noted above, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the TIK TOK mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. As discussed above, prior to being locked by the Registrar, the Domain Name resolved to a website that featured content in English, including the phrase “Sign up today and get up to $4,500 in ad credit”. The website also redirected Internet users to a third party website that copied and attempted to duplicate Complainant’s official website with the look and feel, Complainant’s trademark and logo, as well as content located on Complainant’s website at “https://getstarted.tiktok.com/”. The content on the website also seeks to obtain visitors’ personal information to acquire access to personal information to, such as, sensitive financial information. In creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent’s attempted to deceive unsuspecting Internet users into divulging their personal information by attempting to pass off as Complainant’s TikTok for Business website at “https://getstarted.tiktok.com/” to entice Internet users to sign up and pay for new accounts. After being placed on lock status, the Domain Name resolves to an inactive site. Therefore, the Panel finds that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. Further, Respondent’s actions indicate that it was attempting to fraudulently present itself as Complainant. Such actions would not only be deceitful to unsuspecting Internet users, result in potential interception and improper use of the end user’s personal and financial information, but would interfere with and potentially compromise Complainant’s business. It can also result in tarnishing Complainant’s goodwill and reputation. In addition to the circumstances referred to above, Respondent’s failure to file a response, and Respondent’s use of a privacy service to hide its identity, is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 name Kimberley Chen Nobles
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
Sole Panelist
Date: January 18, 2021
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