The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Whois Agent (389631871), Whois Privacy Protection Service, Inc., United States of America (“United States”) / Victor Hugo, Dominica. 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 Domain Name. On December 23, 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 the Complainant on January 5, 2021, 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 January 6, 2021. 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on February 23, 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 a company located in the Cayman Islands that owns a series of content platforms on the Internet that enable users to share content. One of the Complainant’s most popular platforms is TikTok, which allows users to create and share short-form mobile video. The Complainant’s TikTok app has more than 500 million downloads and the Complainant’s website at “www.tiktok.com” had close to 500 million viewers in the 6-month period between April and September 2020. The Complainant is the owner of numerous trade mark registrations of the word mark TIKTOK (the “TIKTOK Mark”) including registrations in the United States (registration number 5653614, registered on January 15, 2019, with a date of first use May 31, 2017), Japan (registration number 6064328, registered on July 20, 2018) and the European Union (registration number 017913208, registered on October 20, 2018). The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is confusingly similar to the Complainant’s TIKTOK Mark; The Complainant is the owner of the TIKTOK Mark. It holds several registrations for the TIKTOK Mark around the world. The Domain Name consists of the TIKTOK Mark in its entirety with the addition of the word “free”. Prior panels deciding under the Policy have held that the additions of descriptive words are not sufficient to diminish the confusing similarity between a domain name and a complainant’s trade mark. The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the TIKTOK Mark. There is no noncommercial use of the TIKTOK Mark. The use of the Domain Name to sell TikTok followers involves the Respondent engaging in fraudulent conduct that is against the TikTok terms of service. Such a use is not bona fide. Given the reputation of the Complainant’s well-known TIKTOK Mark and the use to which the Domain Name has been put, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s rights. The Domain Name revolves to a website, which, under the TIKTOK Mark, offers a service that likely involves a fraudulent operation in breach of the Complainant’s terms of service. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the TIKTOK Mark, having registered this mark in the United States and the European Union. Disregarding the “.com” Top-Level Domain for the purposes of the comparison the Panel notes that the Domain Name wholly incorporates the TIKTOK Mark and adds the prefix “free”. Prior UDRP panels have found that “when a domain name wholly incorporates a complainant’s trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. The addition of the prefix “free” does not operate to distinguish the Domain Name from the TIKTOK Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s TIKTOK Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making 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.” (Policy, paragraph 4(c)) The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the TIKTOK Mark or a mark similar to the TIKTOK Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Name to operate a website that purport to be able to supply the customer with TikTok “likes”, “views” and “fans”. If such services are not real, then the Respondent is engaging in fraudulent conduct. If such services are real then the Respondent, in providing these “likes”, “views” and “fans”, is engaged in the process of making up fake accounts and breaching the Complainant’s terms of service. Such conduct may be fraudulent and is not a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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. The Panel finds that the Respondent was aware of the Complainant and its reputation in the TIKTOK Mark at the time of the Domain Name was registered. The registration of the Domain Name postdates the registration of the TIKTOK Mark in Japan, the first use of the TIKTOK Mark and the date on which the Complainant applied to register the TIKTOK Mark in the United States. The Respondent’s Website reproduces the Complainant’s logo and purports to offer a service where the Respondent would generate “likes”, “views” and “fans” for a user’s TikTok account. In the circumstances, the registration of the Domain Name in awareness of the TIKTOK Mark and in the absence of rights or legitimate interests amounts to registration in bad faith. The Respondent is using the Domain Name for a website purporting to offer services that involve the creation of false TikTok accounts. In previous UDRP decisions such conduct has been found to be evidence of registration and use in bad faith, see Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov / Privacy Protect, LLC (Privacy Protect.org),WIPO Case No. D2020-0521, in which the panel described the then respondent’s conduct (essentially identical to the present Respondent’s conduct, albeit in respect of the Instagram service) as follows: “The Panel is not convinced by the arguments of the Respondent, which are not supported by any evidence or explanation how its users would receive large numbers of genuine “followers”, “likes”, “views” and “comments” in such short periods of time legitimately and without breaching the rules of conduct established by the Complainant for the users of its Instagram service. The Panel is not aware how this could possibly happen without some type of fraud or other illegitimate conduct. The elements of all of the disputed domain names and the content and appearance of the associated websites shows that they are all focused on the Complainant and its Instagram service, which makes the statement of the Respondent that it was not targeting the Complainant simply not credible.” and “Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the INSTA and INSTAGRAM trademarks (or its abbreviated form INSTA) in an attempt to attract traffic to the disputed domain names and to offer Internet users illegitimate services that destroy the authenticity of the user experience sought by Instagram and damage the reputation of the Complainant.” The Panel agrees with the conclusions of the panel above and finds that the Respondent is using the Domain Name in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name Nicholas Smith 1 The TIKTOK Mark is in some jurisdictions registered with a space between “Tik” and “Tok” and sometimes without (i.e. “TikTok”). The decision in no way turns upon this distinction, which is di minimis.
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: March 3, 2021
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