The Complainant is Bytedance Ltd., Cayman Islands, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy Service provided by Withheld for Privacy ehf, Iceland/ Abdullah Akhtar, Abliker, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 19, 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 May 20, 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”). On May 20, and May 21, 2021 the Center received informal pre-commencement communications from Respondent by email. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent sent an email communication to the Center on May 26, 2021. The Center appointed John Swinson as the sole panelist in this matter on June 20, 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 operates a series of content platforms that enable people to create and view social media and video content, including the platforms Toutiao, Douyin, and TikTok. Musical.ly was a Chinese social media service headquartered in Shanghai on which platform users created and shared short lip-sync videos. The Complainant purchased Musical.ly in 2017 and then in 2018 merged Musical.ly into TikTok. The Complainant and its subsidiaries, own a number of trademark registrations for MUSICAL.LY including United States of America (“United States”) trademark registrations nos. 5268717 and 5268827 that both have a registration date of August 22, 2017. The Respondent is a resident of Pakistan. Little information is known about the Respondent. The disputed domain name was registered on September 23, 2018. The website at the disputed domain name promotes and distributes a TikTok video downloader, that purportedly allows an unlimited number of downloads of TikTok videos without a watermark. The website is titled “MusicallyDown”. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions: The Complainant and its subsidiary, Musical.ly Inc., is the owner of trademark registrations for MUSICAL.LY and TIK TOK across various jurisdictions. The Complainant is an Internet technology company. It owns a series of content platforms that enable people to connect with content through machine learning technology, including Toutiao, Douyin, and TikTok. Musical.ly was a Chinese social media service headquartered in Shanghai, with an overseas office in Santa Monica, California, on which platform users created and shared short lip-sync videos. Initially released in August 2014, Musical.ly was well known, especially to the younger audience. By the end of 2017, the app had reached over 200 million users. On November 2017, the Complainant purchased Musical.ly. TikTok was merged with Musical.ly on August 2, 2018 to create a larger video community, with existing accounts and data consolidated into one single app, keeping the title of “TikTok”. At the same time, Musical.ly Inc. changed its name to TikTok Inc. The disputed domain name is a purposeful misspelling of the Complainant’s MUSICAL.LY trademark and must be considered confusingly similar to the Complainant’s trademark. As the disputed domain name differs from the Complainant’s trademark by only the removal of the punctuation mark, the disputed domain name should be considered a prototypical example of typosquatting – which intentionally takes advantage of Internet users that inadvertently type an incorrect address. Further, the Respondent’s removal of the punctuation mark does nothing to distinguish the disputed domain name from the Complainant’s MUSICAL.LY trademark. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests. The WhoIs information for the Respondent does not resemble the disputed domain name. The Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain name. The Respondent’s inclusion of the Complainant’s MUSICAL.LY and TIK TOK trademarks on the website at the disputed domain name is a direct effort to take advantage of the fame and goodwill that the Complainant has built in its brand. The Respondent is not only using the confusingly similar disputed domain name, but is also confusing users into believing that some sort of affiliation exists between it and the Complainant by adding a title “MusicallyDown” and “TikTok Video Downloader, No Watermark. Unlimited Downloads. Free”. This creates the appearance that the disputed domain name and its website are somehow affiliated with the Complainant, when they are not. By registering a domain name that incorporates the misspelled version of the MUSICAL.LY trademark while merely adding the term “down”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Here, the Respondent creates a likelihood of confusion with the Complainant and its trademarks by displaying on its website the Complainant’s MUSICAL.LY and TIK TOK trademarks and purports to enable Internet users to download TikTok videos for free and without watermark. Moreover, the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy, paragraph 4(b)(iii), because the Respondent’s domain name is confusingly similar to the Complainant’s trademark and the website allegedly enables visitors to download TikTok videos without watermark and at no cost, in violation of TikTok’s Terms of Service. On balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith. B. Respondent The Respondent’s response was informal. For example, the Respondent sent emails to the Center stating: “Hello, i have taken down the domain. To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant has clearly proven ownership of numerous registered trademarks for MUSICAL.LY. The Respondent does not dispute that the Complainant holds valid trademarks. The question that arises is whether the disputed domain name, The Panel considers that the disputed domain name is confusingly similar to the Complainant’s trademark, disregarding the generic Top Level Domain (“gTLD”) “.com”, for the following reasons: - Apart from a dot, the Complainant’s trademark is wholly incorporated into the disputed domain name. The disputed domain name captures, in its entirety, the Complainant’s MUSICAL.LY trademark and simply adds the term “down” to the end of the trademark. The mere addition of this term to Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under the Policy. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms usually does not prevent a finding of confusing similarity under the first element. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. None of the circumstances listed in paragraph 4(c) apply in the present circumstances. The Complainant has not authorized or permitted the Respondent to register or use the disputed domain name or to use the MUSICAL.LY trademark. The Complainant has rights in the MUSICAL.LY trademark which precede the Respondent’s registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name; to the contrary, the evidence points to the Respondent being aware of the Complainant and the Complainant’s services, even using the Complainant’s TikTok trademark to promote the Respondent’s service. The website at the disputed domain name is established for commercial purposes. The website states: “We run Google Ads on our website, in order to pay for our servers and keep MusicallyDown alive. If you want to support us, just disable your AdBlocker while using MusicallyDown.” The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. The Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The disputed domain name resolves to a website which promotes a service to download content from the Complainant’s platform. Clearly, the Respondent is aware of the Complainant and its trademarks. On its own “MUSICALLY DOWN” is not a common or meaningful term. It could reasonably be a reference to the Complainant’s MUSICAL.LY trademark and the ability to download content from the Complainant’s TikTok platform. The Panel notes that the MUSICAL.LY platform was merged into the TikTok platform about the time the disputed domain name was registered by the Respondent. In addition, the Panel notes that the website at the disputed domain name purports to provide a TikTok video downloader, which affirms the Respondent’s target to the Complainant. Visitors to the Respondent’s website are likely to be misled into assuming that the website is operated by, associated with or approved by the Complainant. The Panel considers it likely that the Respondent registered and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This is bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. Further, the Respondent failed to provide any accurate contact information for himself on the website at the disputed domain name. Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name was in bad faith. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 John Swinson
Inform the complaint, and don't cancel domain”. 6. Discussion and Findings
(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 term “down” when used by the Respondent is a likely reference to download. The Respondent’s product is designed to download videos from the Complainant’s platform.
Sole Panelist
Date: June 29, 2021
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