The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is WhoisGuard, Inc., Panama / Curtis Smith, United Kingdom, represented by Dmitriy Chyrkin, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 December 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent two informal messages to the Center on December 24, 2020. The Complainant filed an amended Complaint on December 28, 2020. The Complainant sent an email communication to the Center on January 6, 2021. On the same date, the Respondent sent an email communication to the Center. 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 January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Response was filed with the Center on January 7, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 22, 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 providing content platforms that enable users to connect while consuming and creating content as well as applications (“apps”) for its video-sharing social networking services such as TikTok and Douyin. TikTok allows users to create videos that run for 15 seconds before looping to restart, and connect clips together to create videos up to 60 seconds long. The videos incorporate music samples, filters, quick cuts, stickers and other add-ons. TikTok is available in more than 150 different markets, in 75 languages. The Complainant is the owner, amongst several others, of the following trademark registrations (Annex 1 to the Complaint): - European Union Trademark Registration No. 017913208 for the mark TIK TOK, registered on October 20, 2018, covering products and services in classes 9, 25, 35, 42 and 45; and - United States of America Trademark Registration No. 5653614 for the mark TIK TOK, registered on January 15, 2019, covering products and services in classes 9, 38, 41 and 42. The disputed domain name The Complainant asserts that TikTok was launched outside China in May 2017 and rapidly became the most downloaded app in the United States of America in October 2018 (Annex 6.3 to the Complaint), presently ranked as the #1 app in Entertainment in the Apple Store and #3 app in Social in Amazon (Annex 7 to the Complaint). The Complainant further asserts that according to SimilarWeb.com, “www.tiktok.com” had a total of 493.03 million visitors, ranking 44th globally and 67th in the United States of America in the 6-month period between April and September 2020, whereas Alexa.com ranks “www.tiktok.com” as 160th most popular site in the world, 103rd in the United States of America and 55th in Mexico, in global Internet traffic and engagement over the 90-day period (July 27 to Oct 26, 2020) (Annex 8 to the Complaint), what leads to TIKTOK being a well recognized and respected brand worldwide. According to the Complainant, the disputed domain name that consists merely of the Complainant’s trademark and the addition of the generic and descriptive terms “followers” and “free” which are closely linked and associated to the Complainant’s trademark and only serves to increase the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant states that the Respondent’s use of the disputed domain name in connection with a website called “Free TikTok Followers” purporting the sale of TikTok “likes” and “followers”, also referring to the Complainant’s TIK TOK trademark suggests that the Respondent’s intention is to cause consumer confusion (Annex 3 to the Complaint). As to the absence of rights or legitimate interests, the Complainant argues that: i. the Respondent is not sponsored by or affiliated with the Complainant in any way, not having the Complainant given the Respondent any license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names; ii. the Respondent, named Curtis Smith, is not commonly known by the disputed domain name; iii. the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain name given that by naming its website as “Free TikTok Followers” and using a variation of the Complainant’s musical note logo as its logo and favicon, the Respondent seeks to take advantage of the fame and goodwill that the Complainant has built in its brand and logo, also confusing users into believing that some sort of affiliation exists between it and the Complainant, which is not true; and iv. the Respondent is offering for sale “likes” and “followers” what is contrary to TikTok’s Terms of Service (Annex 9 to the Complainant) and is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy. In what it relates to the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given the reproduction of its logotype and offer of “followers” and “likes” at the website that resolves from the disputed domain name, making it only possible to conclude that the Respondent knew about the Complainant’s trademark and reputation, and used them to its advantage in bad faith. The Complainant further argues that the disclaimer at the Respondent’s website stating that “TikTokFollowersFree.com In no way are we affiliated with TikTok” merely serves to acknowledge the likelihood of confusion with the Complainant and is not capable of changing the Respondent’s intent to misleadingly divert the Complainant’s consumers for its own commercial gain. Furthermore, the choice to retain a privacy protection service to hide its true identity is a further indicative of the Respondent’s bad faith. B. Respondent On December 24, 2020 the Respondent sent an informal message to the Center stating that it had created a new logo which was not similar to the Complainant’s one, also adding the wording “TikTokFollowersFree.com is a Social Media Website and is not associated with Bytedance or the TikTok brand” and updating its privacy policy to include “TikTokFollowersFree is a fan website that also sells social media services, it is NOT associated with Bytedance or TikTok brand” and “This website is operated a small team, who share useful information regarding TikTok updates and news. We don’t attempt to be a commercial entity or assign otherwise to a brand; we are an information and resource website which works with news publishers to deliver high quality news and information.” The Respondent’s counsel submitted a formal Response whereby it requests for a finding of Reverse Domain Name Hijacking given that “tiktok” is a generic term and the disputed domain name is a fully functional website which offers support services. According to the Respondent, it registered the disputed domain name in good faith and under the belief that “tiktok” is a generic term. In addition to that, the Respondent asserts that there are hundreds of filed marks incorporating “tik tok” around the word, owned by different parties (Annex 2 to the Response). In addition to that, the Respondent points out that the term “tiktok” would have potential different meanings. The Respondent further asserts that its website has a disclaimer which eliminates any possibility that the Respondent was attempting to infer an affiliation with the Complainant and the Complainant’s mark and would precludes any determination that the Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. In view of the clear lack of a plausible basis for the Complaint the Respondent requests for a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainant has established its rights in the TIK TOK trademark. The addition of the descriptive terms “followers” and “free” does not prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In that sense, the Complainant indeed states that the Respondent is not sponsored by or affiliated with the Complainant in any way, not having the Complainant given the Respondent any license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names. Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of a right or legitimate interest. The Respondent has been clearly targeting the Complainant’s users to offer its services for free or at “premium” paid packages, originally reproducing the Complainant’s logo and presently clearly making reference to the Complainant’s app. Such use clearly contradicts the Respondent’s argument that it had registered the disputed domain name for its “generic” value. As the evidence submitted shows the Respondent was clearly targeting the Complainant’s users and offering for sale “likes” and “followers”, and cannot be considered a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to the Policy. The Respondent argues that the existence of a disclaimer as to the lack of relationship between the Parties would eliminate any possibility that the Respondent was attempting to infer an affiliation with the Complainant and the Complainant’s trademark. Previous UDRP panels have indeed recognized that, under certain conditions, the use of a domain name that reflects a trademark for the resale of the trademark holder’s goods can give rise to rights or legitimate interests. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused” (WIPO Overview 3.0, section 3.7). Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark in connection with the offer for purchase of “likes” and “followers” at the Complainant’s social network and app and the Respondent’s intentional attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a service on the website. In this respect, and as previously noted, the Panel considers the Respondent’s use of a disclaimer as an admission by the Respondent that users may be confused. The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. D. Reverse Domain Name Hijacking (“RDNH”) Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Rules define Reverse Domain Name Hijacking as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. As seen above, the Respondent clearly did not register the disputed domain name for the possible descriptive nature of the term “tik tok” but rather targeted the Complainant and its well-known app. In the circumstances, the Respondent’s request for a finding of Reverse Domain Name Hijacking is denied. 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, Wilson Pinheiro Jabur
Sole Panelist
Date: March 3, 2021
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